Gowling WLG Canada
The Canadian Intellectual Property Office has issued a new practice notice to clarify Trademarks Office practice as it pertains to objections in examination raised under Paragraph 12(1)(b) of the Trademarks Act to geographical names. The new practice notice follows on the heels of, and aligns Trademarks Office examination practice with, the 2016 Federal Court of Appeal decision in MC Imports Inc v AFOD Ltd (2016 FCA 60).
Paragraph 12(1)(b) of the act provides that a mark is registrable if it is not clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services in association with which it is used or proposed to be used. Before the Federal Court of Appeal’s decision, the case law was not entirely settled as to whether the appropriate test for determining whether a mark was clearly descriptive of a place of origin should take into account the perspective of the ordinary consumer.
In MC Imports v AFOD Ltd the Federal Court of Appeal held that the test to determine whether a mark is clearly descriptive of a place of origin is ultimately objective and should not take into account the perspective of the ordinary Canadian consumer of the goods or services. The court held that “if a trademark is a geographic name that refers to the place of origin of the goods or services with which the trademark is associated, it is clearly descriptive of the place of origin”. According to the new practice notice, this is the test that will be applied in examination.
In addition, the practice notice also articulates how examiners should approach objections based on the fact that the mark is deceptively misdescriptive of the place of origin. In such instances, the first step is to determine whether the mark is misdescriptive (ie, whether the mark is a geographic name and the associated goods or services do not emanate from that place). If the mark is determined to be misdescriptive, it is then necessary to consider whether the mark is deceptively so. In this analysis, the examiner must make a determination as to whether the ordinary consumer “would be misled into the belief that the associated goods or services had their origin in the geographic name in the trademark”.
In its analysis of these issues, the practice notice set outs that the office may request an applicant to confirm the actual place of origin of the goods or services set out in the application. In addition, if a mark has multiple meanings, one of which is a geographic name, the examiner is to determine the primary or predominant meaning from the perspective of the ordinary Canadian consumer of the associated goods or services.
The new practice notice should provide applicants with a better understanding of how the office will consider place of origin objections under Paragraph 12(1)(b) of the act.
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Gowling WLG Canada
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