MC Imports Ltd. v. Afod Ltd., 2014 FC 1161

This was a motion for summary trial relating to an alleged trademark infringement by the Defendant of the trademark LINGAYEN held by the Plaintiff. In response, the Defendant counter-claimed against the validity of the trademark’s registration. The LINGAYEN trademark covers Filipino food products and food supplier and distributor services.

The Defendant imported from the Philippines a shipment of food products, which contained labels marked with its trademark, as well as language of “Lingayen Style” in lesser-script immediately below the trademark. The Defendant sold its food products in 2011, with total revenues of those products being less than $3,500. The Plaintiff claimed that LINGAYEN was a discrete and distinctive word, generally not known to Canadians or in common use in the English language. The Defendants, on the other hand, alleged that Lingayen is a place in the Philippines known to Canadian consumers, that Lingayen is also known to Canadians for certain food products, and that products from Lingayen are known for their distinct aroma and flavour. The Court was, therefore, asked to consider if it was appropriate to determine this matter by summary trial, and whether the Plaintiff’s claim for infringement should be dismissed because the trademark is invalid (or even independent of the trademark’s validity).

The Court found that a majority of the factors to be considered when assessing the appropriateness  of a summary trial weighed in favour of summary proceedings in this case. The Court then considered the validity of the trademark under section 12(1) (d) of the Trademarks Act (the “Act”), noting that “a mark can only be clearly descriptive or deceptivelymisdescriptive of place of origin if it would be perceived by the ordinary consumer as relating to the ware’s place of origin.” Otherwise, the Court held, it could neither describe nor deceive. The Court also recognized the alternate view that the perspective of the “ordinary consumer” may be irrelevant in this context because “any mark identifying a ware’s authentic place of origin is invalid regardless of the public’s perception of it.” While the Court did not resolve this “jurisdictional divide” (which it denied even exists), it found that the trademark was invalid in any event. According to the Court, it is clear that Lingayen is a geographical location, which is known as both a place and a source of certain food products that are sold by the Plaintiff. The Court also found that the Plaintiff’s goods originate from Lingayen. As such, the Court held that the wares are clearly descriptive of this place of origin, and thus not registrable under section 12(1)(d) of the Act. The Court also considered the alternate formulation, which considered the perceptions held by ordinary consumers. However, the Court held that regardless of which approach is taken to the question of geographic marks, the outcome is the same.

The Court also considered the Plaintiff’s claim independent of trademark validity, and stated that “trademark infringement requires a defendant to use the trademark ‘as a trademark’, i.e. for the purpose of distinguishing its wares and services from others.”

The Court held that the words “Lingayen Style” are not used as a trademark, the Defendant did not display the TM symbol with the words “Lingayen Style”, and the words appeared in lesser-script immediately below the Defendant’s trademark (which was prominent, according to the Court, and would be recognized as such by an ordinary consumer who was somewhat in a hurry). This led the Court to the conclusion that there could be no infringement under sections 19 or 20 of the Act.

Therefore, the Court granted the Plaintiff’s motion for summary trial, but dismissed the Plaintiff’s action for infringement, granted a declaration of invalidity in respect of the Plaintiff’s trademark LINGAYEN, and ordered the trademark struck from the Register.