Sidebar: Origin Ownership

Trademarks describing a place of origin are harder to establish now that the FCA has clarified the test for registrability.
The Federal Court of Appeal has of late provided important guidance on the registrability of trademarks that describe places
of origin of goods or services. Descriptive trademarks can only be registered if they have become distinctive by the time of filing for registration. Until recently, the test for determining distinctiveness was unclear. But in February 2016, the FCA decision in MC Imports v. AFOD added considerable clarity to the issue.

The case centred on Lingayen, a municipality in the Philippines known for its shrimp paste products. MC registered the trademark LINGAYEN in association with certain Filipino foods including fish sauce and paste. AFOD also imported food products from the Philippines, some of which included the words “Lingayen Style.” MC sued for trademark infringement.

At trial, the Federal Court dismissed the action on the basis that the trademark was clearly descriptive because Lingayen had “a generally recognized connection to fish sauce products from the perspective of the average Canadian consumer of the [goods] in question.” But the court did not resolve the controversy as to the proper test for whether a trademark is clearly descriptive of the place of origin.

One view of the proper test requires courts to consider whether the ordinary consumer would recognize the trademark as relating to the place of origin; the competing view holds that the perspective of the ordinary consumer is irrelevant and the issue is whether the trademark actually describes the place of origin.

The FCA ruled that the test for whether a trademark is clearly descriptive, and therefore non-registrable, requires an examination of three factors: whether the trademark is or contains a geographical name; whether the goods or services in questions originated from that location; and, if so, whether the trademark has been sufficiently used in Canada to be distinctive of the owner. If it is so distinctive, it may be registrable.

“For clearly descriptive trademarks, consumers’ perceptions are largely irrelevant, which is consistent with the more objective purpose of protecting traders’ rights to use words common to the trade,” writes Nelson Godfrey of Vancouver in a Smart & Biggar/Fetherstonhaugh bulletin. “With respect to deceptively misdescriptive trademarks, consumers’ perceptions remain a relevant inquiry, which is consistent with the more subjective purpose of protecting consumers from being misled.”