Law Times

Page 8 January 30, 2017 • Law Times www.lawtimesnews.com Hard to register trademarks with place names BY MICHAEL MCKIERNAN For Law Times A pplicants hoping to register trademarks that include place names face a tall order after new guidance from the Ca- nadian Intellectual Property Of- fice, according to lawyers who practise in the area. The CIPO notice, which re- f lects the Federal Court of Ap- peal decision last year in MC Imports Inc. v. AFOD Ltd., was released in November, and it confirms that a trademark for the name of a place where the good or services associated with it came from will be considered clearly descriptive. Under s. 12 (1) (b) of the Trade-marks Act, that renders the mark unregisterable. And for geographic names other than the place of origin, the notice says applicants risk rejection if they submit trade- marks for place names that would lead consumers of the product or service to believe that they actually came from that place. CIPO says those marks are unregisterable for being "de- ceptively misdescriptive." "The takeaway is that the trademark office is going to be pretty stringent when it comes to looking at geographic names," says Susan Keri, a partner in the Toronto office of intellectual property law boutique Bereskin and Parr LLP. Ottawa lawyer Paula Clancy says businesses that have previ- ously succeeded in registering geographic names will now face problems enforcing their rights. "If you launch an infringe- ment action for marks that are purely geographic, then it's go- ing to be virtually impossible, because the validity of the mark is going to be challenged and there is a good chance it will be knocked down," she says. According to the CIPO no- tice, trademark applicants still have room to argue for registra- tion if they can show that the geographic name is only one of multiple meanings, and that the ordinary Canadian consumer would not consider the place the main meaning of the word. An- other option is to prove the mark has acquired distinctiveness in Canada by the time the applica- tion is made for registration. Despite the narrowing of the path to registration of geo- graphic name trademarks, Ot- tawa intellectual property law- yer Adam Tracey says IP lawyers and their clients will welcome the clarity that comes with the CIPO guidance. "It's a very straightforward, neat and tidy practice note that ref lects the way the law has been going for some time," he says. MC Imports concerned a food company that imports and sells food under the trademark "Lingayen," which is also the name of a region of the Philip- pines known for its distinc- tive shrimp paste. When rival importer AFOD brought in its own batch of shrimp paste and labelled it "Lingayen style," MC Imports launched an infringe- ment action seeking damages for use of its trademark. However, a federal court judge sided with AFOD and found the trademark invalid be- cause it was clearly descriptive of the product's place of origin. MC Imports appealed, arguing that the trademark could not be clearly descriptive because an ordinary Canadian consumer would not make the connection between the mark and its name- sake in the Philippines. But the company lost again when a unanimous three-judge panel of the Federal Court of Appeal ruled that the consumer per- spective was irrelevant, reject- ing one line of judicial thought on the issue. "If the wares or services originate in the place referred to by the trade-mark, then the trade-mark is clearly descriptive of place of origin. There is no ambiguity when the trade-mark is the name of the place of origin that would invite further inqui- ry: referring to the place of ori- gin by its name is the pinnacle of clarity. This is why the perspec- tive of the ordinary consumer of the wares or services is unnec- essary," Federal Appeal Court Justice Johanne Trudel wrote on behalf of her colleagues. "When filing an application for regis- tration of a trade-mark referring to a geographical place, an ap- plicant should not be allowed to benefit from the consumer's lack of knowledge in geography." According to Keri, the MC Imports decision and the CIPO notice that f lowed from it are the culmination of a recent shift in jurisprudence to treat geo- graphic descriptiveness differ- ently from other types. Apart from place of origin, s. 12 (1) (b) of the Trade-marks Act also deals with the registerability of marks that are clearly descrip- tive or deceptively misdescrip- tive of the "character or quality of the goods or services" associ- ated with it. "There is a fairly sizable body of case law that has held that the impression of the ordinary con- sumer is important when de- termining the issue of whether a mark is clearly descriptive or deceptively misdescriptive of the character, quality or place of origin," Keri says. "The more re- cent jurisprudence suggests that there is a different test for geo- graphic descriptiveness. "Many would argue that there isn't any statutory basis for the distinction," she adds. In MC Imports, the court said that consumer views can come into play on an assessment of whether a trademarked place name has other meanings and which one is predominant. "Where such an inquiry is necessary, the relevant ordinary consumer from whose perspec- tive this question ought to be considered is the ordinary con- sumer of the products or servic- es with which the Mark is asso- ciated," rather than the broader "general public" definition pre- ferred by some judges in previ- ous decisions, Trudel wrote. FOCUS ON Intellectual Property Law Susan Keri says after a ruling last year 'the takeaway is that the trademark office is going to be pretty stringent when it comes to looking at geographic names.' See Clarity, page 12 FOCUS This is more than a phone book. 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