According to section 12(1)(b) of the Trademarks Act of Canada, a trademark is not registrable if it is “clearly descriptive or deceptively misdescriptive … of their place of origin.”
In Nia Wine Group Co., Ltd. v. North 42 Degrees Estate Winery Inc., 2022 FC 241, the Federal Court of Canada reasoned that “place of origin” in paragraph 12(1)(b) of the Trademark Act should be “interpreted to refer to any geographical designation”. This appears to significantly expand the scope of “place of original” as commonly understood.
“Place of origin” is a term commonly encountered in Canadian trademark practice. In 2016, the Federal Court of Appeal of Canada clarified the test to determine whether a trademark is the “place of origin” of the goods or services in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60, which includes:
- whether the impugned trade-mark is a geographic name;
- whether the wares or services originate from the geographic location used as the trade-mark; and
- whether the trade-mark’s prior use is relevant
Traditionally, the “place of origin” was interpreted to mean a geographic name or location. For example, the current Trademark Examination Manual states that “[a] trademark is clearly descriptive of the place of origin if the trademark as a whole is a geographic name and the associated goods or services originate from the location of that geographic name” (emphasis added).
However, Nia Wine appears to suggest that any trademark that has a geographic connotation may be considered to be “clearly descriptive or deceptively misdescriptive … of their place of origin” so that the trademark is prevented from being registered.
As such, it is recommended that applicant should consider avoid any trademark that has associated geographic meaning when choosing the trademark.
Background
The Applicant, North 42 Degrees Estate Winery Inc., applied to register the trademark “NORTH 42 DEGREES” in association with the goods “wine”. The application was approved for advertisement.
The opponent, Nia Wine Group Co., Ltd., opposed the registration of the trademark “NORTH 42 DEGREES” on several grounds, one of which is that the subject trademark is clearly descriptive of the place of origin of the goods because the Applicant’s winery is located at or near the 42nd line of the latitude in the northern hemisphere.
The Trademarks Opposition Board (“TMOB”) deemed that the trademark ” is neither a geographic name referring to a place of origin nor is it the name of a place.” The TMOB further states that “in the absence of evidence to the contrary, the Mark would be seen by the average consumer, …, as a geographical reference which alludes to a coordinate for a place or locality, but does not clearly describe a place or ‘geographic region’”. Thus, the TMOB rejected the opposition.
The opponent appealed to the Federal Court of Canada. As mentioned above, the judge reasoned that the prior cases did not require the “place of origin” to be a geographic name. Rather, prior cases also used the terms such as “geographic location” and “geographic descriptiveness”. As such, “place of origin” should have broader meaning than geographic name. Eventually, the Federal Court determines that “place of origin” should be “interpreted to refer to any geographical designation”. “
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