Author: Joe Conneely, Conneely PC
Under Section 12(1)(b) of the Canadian Trademarks Act, trademarks containing words are examined for any clearly descriptive or deceptively misdescriptive meanings, in English or French, as applied to the character or quality, place of origin, conditions of, or persons employed in the production of the associated goods or the performance of the services. The purpose of denying registration to clearly descriptive marks is to prevent unfair competition by the appropriation of words that should be common to all. On the other hand, the purpose of denying registration to deceptively misdescriptive marks is to prevent the public from being misled. Note that a misdescriptive word is generally registrable, but a deceptively misdescriptive word is not.
In accordance with a recent decision of the Canadian Federal Court of Appeal in the case of MC Imports Inc. v. AFOD Ltd., 2016 FCA 60, the Canadian Trademarks Office has adopted a new practice with respect to applying the “place of origin” provision in Section 12(1)(b) of the Trademarks Act to geographic names. According to the Trademarks Office’s new practice, a trademark is clearly descriptive of the place of origin if the trademark, whether depicted, written or sounded, is a geographic name and the associated goods or services originate from the location of the geographic name. In addition, a trademark is misdescriptive if the trademark is a geographic name and the associated goods or services do not originate from the location of the geographic name. If a trademark is misdescriptive, further analysis is required to determine if it is deceptive. In assessing whether a trademark is deceptively misdescriptive, it must be determined whether the ordinary consumer would be misled into the belief that the associated goods or services had their origin in the location of the geographic name in the trademark.
Under the Trademarks Office’s new practice, a trademark will be determined to be a geographic name if research shows that the trademark has no meaning other than as a geographic name. In addition, a trademark will be determined to be a geographic name if the trademark, despite having multiple meanings, has a primary or predominant meaning as a geographic name. The primary or predominant meaning is to be determined from the perspective of the ordinary Canadian consumer of the associated goods or services. If a trademark is determined to be a geographic name, the actual place of origin of the associated goods or services may be ascertained by the Trademarks Office by way of confirmation from the applicant. Furthermore, in determining the place of origin of the associated goods or services, the Trademarks Office will not consider the address of the applicant to be relevant.
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