In MC Imports Inc. v. AFOD Ltd., 2016 FCA 60, the Federal Court of Appeal provided guidance with respect to the registrability of trademarks that describe places of origin of wares and services. MC Imports Inc. imported and sold food products under the trademark LINGAYEN. The trademark covered "Filipino food products and food supplier and distributor services". Lingayen is a municipality in the Philippines known for its bagoong shrimp paste products characterized by their distinct aroma and flavour.
MC Imports Inc. appealed a decision of the Federal Court (2014 FC 1161), where the Judge found that MC Imports Inc.’s trademark LINGAYEN was not registrable at the time of the registration and was therefore invalid, because it was clearly descriptive of the place of origin of the wares in relation to which it was used, and that it was not distinctive. The Federal Court of Appeal dismissed the appeal with costs.
Trudel J.A. provided the reasons for judgment of the Court. To determine whether a geographic name is unregistrable as a trademark because it is clearly descriptive of place of origin, one must (1) determine that the impugned trademark is a geographic name; (2) determine the place of origin of the wares or services; and (3) assess the trademark owner’s assertions of prior use, if any.
The determination of whether the impugned trademark is a geographic name may require consideration of consumer perceptions if the name of a geographic place has multiple meanings. The primary meaning of the word to a person of ordinary education and intelligence dictates its meaning. Names of places not widely known to Canadians are not outside the ambit of paragraph 12(1)(b)’s prohibition of clearly descriptive trademarks.
If the trademark is a geographic name that refers to the actual place of origin of the goods or services with which the trademark is associated, then the trademark is clearly descriptive of the place of origin within the meaning of paragraph 12(1)(b) of the Act. However, subsection 12(2) of the Act provides an exception to paragraph 12(1)(b). If a trademark has become distinctive by the date of application through use in Canada by the applicant, then it is registrable, even though it is descriptive. The applicant must demonstrate that the trademark has acquired a dominant secondary or distinctive meaning in relation to the wares or services with which it is associated.
Trudel J.A. held that the trademark LINGAYEN clearly described the place of origin of the goods with which it was associated, since the goods originated in Lingayen, and there was no evidence that the ordinary meaning of the word referred to anything but the municipality. Furthermore, the appellant failed to meet the burden of demonstrating that the trademark had acquired distinctiveness (s.12(2)) at the time of registration. It was unnecessary for the Court to address infringement, given its conclusion that the registration of the mark was invalid.