Canada’s Federal Court of Appeal Provides Welcome Guidance on Geographically Descriptive Trademarks

Canada’s Federal Court of Appeal (the “Court of Appeal”) has recently had the opportunity to clarify the test for  registrability of geographically descriptive trademarks in two separate decisions. The most recent of these is the decision in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60.  In the proceedings underlying the appeal, MC Imports Inc. (“MC Imports”) brought an action for infringement against AFOD Ltd. (“AFOD”) on the basis that AFOD’s use of the words “Lingayen Style”, which appeared on AFOD’s imported Philippines food products in a relatively small font, infringed MC Imports’ registered trade-mark LINGAYEN. MC Imports’ registration issued in 2003 and covered Filipino food products, including fish sauce and fish paste. Invoking the old adage that the best defence is a good offence, AFOD counterclaimed and sought to invalidate MC Imports’ LINGAYEN registration on the basis that it was either clearly descriptive or deceptively misdescriptive of the place of origin of the claimed goods and therefore not registrable under the Trade-marks Act, and also on the basis that it was not distinctive of MC Imports as the source of the claimed goods.

The lower court (the “Federal Court”) found that LINGAYEN was the name of a geographical location in the Philippines, known for bagoong products; that the LINGAYEN brand goods of MC Imports originated from Lingayen; and that the ordinary consumers of those products were Canadians of Filipino or South East Asian origin.  The Federal Court ruled in AFOD’s favour and declared the registration for LINGAYEN invalid on the basis that it is clearly descriptive of the place of origin of the goods.  However, the Federal Court declined to settle the issue of whether the perspective of the “ordinary consumer” is relevant to a finding that a trade-mark is clearly descriptive of place of origin on the basis that, in this case, the end result would have been the same. On the issue of distinctiveness, the Federal Court also found in AFOD’s favour and held that the mark had not acquired sufficient distinctiveness in Canada through long term advertising and use by MC Imports. Accordingly, the Federal Court ordered that the LINGAYEN registration be struck from the Register.

On appeal, the key issues reviewed by the Court of Appeal were the appropriate legal test for assessing a finding of clear descriptiveness of a place of origin and the definition of the relevant “ordinary consumer”.  In dismissing the appeal of MC Imports and upholding the Federal Court’s decision, the Court of Appeal found that the perspective of the ordinary Canadian consumer is not always relevant for a finding that a mark is clearly descriptive of its place of origin. The Court of Appeal went on to clarify the legal test to be followed when assessing whether a trade-mark is clearly descriptive of place of origin, setting out a three-step assessment:

(1) whether the trade-mark is the name of a geographic place. The Court of Appeal stated that if the primary meaning of the trade-mark is as a geographic place, it was not relevant whether the place was known to Canadian consumers.  If there is more than one meaning (other than geographic) attached to the trade-mark, then the perception of the relevant “ordinary consumer” comes into play in determining the primary meaning of the trade-mark;

(2) whether the goods or services associated with the trade-mark originate from that geographic place. If the goods/services do not originate from that geographic place, the analysis switches to whether the trade-mark is deceptively misdescriptive; and

(3) an assessment of the trade-mark owner’s claims of use, if any. The Court of Appeal concluded that since registration of a descriptive trade-mark can be obtained under Section12(2) of the Trade-marks Act if the trade-mark had become distinctive at the time of filing the application for registration, the perception of the relevant “ordinary consumer” becomes significant at this stage. The Court of Appeal noted that MC Imports’ evidence of use in Canada, although spanning a long period of time (since 1975), was insufficient to support a finding of acquired distinctiveness.

The Court of Appeal agreed with the Federal Court that the ordinary consumer whose perspective should be considered is not the general public in Canada, but the person who would ordinarily buy the products or services associated with the trade-mark. In this case, the actual consumer would have been Canadians of Filipino or South East Asian descent.

The Court of Appeal found that MC Imports’ registration for LINGAYEN was invalid and not distinctive, and dismissed the appeal.  In doing so, the Court of Appeal pointed out that the name of a geographic place “should remain open to all producers of goods and services to describe the origin of what they are selling, even if the ordinary consumer might not be previously familiar with that place”.

This decision comes close on the heels of Lum v. Dr. Coby Cragg Inc., 2015 FCA 293, another Court of Appeal decision on the issue of clear descriptiveness of place of origin in which the registration for OCEAN PARK – registered in association with dental services performed in the Ocean Park neighborhood in Surrey, BC – was similarly invalidated.  While the OCEAN PARK decision was not referred to in the LINGAYEN decision, the analysis and conclusions were similar and serve to consolidate the Court of Appeal’s approach in considering registrability of trade-marks that refer to a geographic place which is the place of origin of the goods or services associated with the trade-mark.

 

 

 

Save the Date: the Importance of the Date of First Use in Canadian Trade-mark Applications (for now)

A recent decision of the Canadian Trade-marks Opposition Board, Constellation Brands Québec Inc. c Sociedad Vinícola Miguel Torres, S.A., 2016 TMOB 4 (“Miguel Torres”), serves as a reminder of the importance of stating an accurate and supportable date of first use, when claiming use as a basis for registration in Canada.

In Miguel Torres, the Applicant filed an application to register the trade-mark HEMISFERIO (the “Mark”) for “wines”, claiming use in Canada since at least as early as October 28, 2011.  As one of its grounds of opposition, the Opponent alleged that the Applicant had not used the Mark in Canada as of the claimed date of first use.

As support for its claimed date of first use, the key piece of evidence relied upon by the Applicant was an invoice dated October 28, 2011, which purportedly corroborated the date of first use asserted by the Applicant’s affiant.  However, the Opposition Board instead agreed with the Opponent’s submission that while the invoice was dated October 28, 2011 and goods were shipped to Canada from Chile on that date, the approximate date of arrival in Canada of those goods was not until January 26, 2012.

Accordingly, because transfer of the property in or possession of the wine bearing the Mark from the Applicant to its Canadian distributors did not take place in Canada until after October 28, 2011, there was no “use” of the Mark in Canada, within the meaning of Section 4(1) of the Trade-marks Act (the “Act”), as of the date of first use claimed in the application.  The application was therefore refused.

While we understand that there will no longer be a need to claim a date of first use in trade-mark applications once the Canadian trade-mark regime changes (likely in 2018), for the time being, trade-mark applicants should strive to claim a date of first use that is accurate and, where possible, supported by documentary evidence.

Implementation of Trademarks Act amendments pushed back to 2018

Since the Canadian Government announced massive changes to the Canadian Trademarks Act (the “Act”) in 2014, practitioners and other stakeholders in the trademark space have been anxiously awaiting its implementation.

Unfortunately we are all going to have to wait a little longer.

It is now expected that the amendments to the Act which have been passed but not yet implemented will not be implemented until sometime in 2018. This pushes out the implementation date again, from an original (and optimistic) implementation date of late 2015, and a revised implementation date of  2017, to 2018.

The implementation of the remaining amendments is expected to coincide with the Canadian Intellectual Property Office’s implementation of the Madrid Protocol, the Nice Agreement and the Singapore Treaty.

We will provide further updates here on the timeline for implementation as more information becomes available.

Nice-ly done: CIPO now accepting voluntary classification of goods and services

Following our post from July 2015, the Canadian Intellectual Property Office (“CIPO”) is now accepting trade-mark applications filed with goods and services classified using the Nice Classification system.  As part of this process, CIPO has also updated the online Canadian trade-marks database, such that “Nice classification” is now a possible search field.  In addition, the Canadian Goods and Services Manual has been updated to allow users to search for specific terms within all 45 Nice classes, and to cut-and-paste or import text containing a list of goods and services for proposed classification by the database.

Once the upcoming changes to the Canadian trade-mark regime come into effect, there will be a requirement to classify the goods and services claimed in an application into Nice classes, and to have that classification approved by an Examiner.  For the time being, however, the classification of goods and services by an Applicant is entirely voluntary.

As another interim point of interest, where the Examiner does not agree with an Applicant’s classification of goods and services for a yet-to-be advertised application, CIPO will nevertheless advertise the application in the Trade-marks Journal if no other requirements and/or objections are outstanding – but without the Nice classification.  Obviously, this will no longer be the case once the changes to Canada’s trade-mark regime come into force.

We will provide an update as soon as it becomes mandatory to classify goods and services in Canadian trade-mark applications.  In the meantime, the ability to search all Nice classes and to view the expanded list of goods and services that are acceptable to CIPO is a welcome update.

Playing Nice: CIPO to accept applications with Nice Classifications this fall

In a milestone step towards harmonization of Canada’s trade-mark regime with most other developed countries, the Canadian Intellectual Property Office (CIPO) announced yesterday that starting this fall, it will accept trade-mark applications filed with goods and services classified using the Nice Classification system.

According to CIPO’s announcement, there will be changes to its website to take advantage of the use of Nice Classification.  In particular, the Goods and Services Manual will be redesigned to facilitate classification of goods and services, and the search capability of the CIPO online database will be updated to allow for searching within specific classes.

Historically, Canada has not used the Nice Classification system when it comes to descriptions of goods and services.  However, as part of the aforementioned harmonization process, Canada will accede to the Nice Agreement.  As we previously reported, CIPO has already started the process of assigning Nice classes to terms in its database.

Happy Canada Day to all of our readers!

Managing the transition: the impact of Canada’s amended Trademarks Act on pending trade-mark applications

The recent amendments to Canada’s Trade-marks Act present many interesting opportunities and challenges to brand owners and their counsel.  This article focuses primarily on the impacts for Canadian trademark applications that are pending at the time the amended Act comes into force—that is, applications that have been filed with the Canadian Intellectual Property Office (CIPO) but that have not yet issued to registration.

As a preliminary comment, there is, unfortunately still no clarity about when the amendments to the Act will come into force. When the amending legislation was passed, CIPO initially indicated that the effective date could be as early as late 2014; subsequent projections were revised to mid-to-late 2015. More recent comments from CIPO suggest that mid-2016 is a more realistic timeframe.  The delay is apparently related to the magnitude of the IT changes required, particularly as connected to implementation of the Madrid  Protocol, to which Canada is becoming a party.

The amendments to the Act are set out in Bill C-31, which reached the last stage in the legislative approval process on June 19, 2014. Those amendments include a number of transitional provisions setting out the legislation’s varied impacts for both registrations and applications, including for applications at different stages of the examination process, as at the date the amended Act comes into force (the Implementation Date). We’ll look briefly at each of these in turn.

Registrations issued prior to the Implementation Date

Under the transition provisions, the amended Act will apply to registrations issued prior to the Implementation Date, with certain exceptions.  Most notably, following the Implementation Date the term of renewal for such registrations will be 10 years, as opposed to the 15 years provided under the current regime. The registration term is not being truncated for registrations issued prior to the Implementation Date; owners will have the benefit of their full 15-year registration terms. Upon renewal, however, only a 10-year term will be available. Of course, prior to the Implementation Date the current regime applies and owners can renew their registrations for 15-year terms.

This shift has led some owners to consider ‘early’ renewal, well in advance of the expiration of their existing registrations, in an effort to obtain the longer 15-year term. However, CIPO has indicated that if the registration anniversary falls after the Implementation Date, any renewal of the registration will be for a period of 10 years, regardless of whether the registered owner submitted the renewal fee and obtained a Certificate of Renewal from CIPO prior to the Implementation Date. CIPO takes this position despite its current practice of issuing renewal certificates at the time fees are paid (and not waiting for the anniversary of registration), with such certificates denoting a 15-year renewal term.  As part of the implementation process, CIPO officers have suggested these certificates may be revised to indicate that if the anniversary of registration falls after the Implementation Date, the registration period will be 10 years, despite other 15-year references on the certificate.

Applications that have been “allowed” prior to the Implementation Date

In the Canadian trademark system, once an application is “allowed”, it means that the application has been approved by a CIPO Examiner for advertisement in the Trade-marks Journal, it has been advertised in the Journal, that no one has filed a Statement of Opposition to that application (or if an Opposition has been commenced it Read more

Canadian Intellectual Property Office posts proposed amendments to Trade-marks Regulations

The Canadian Intellectual Property Office has today posted proposed amendments to the Trade-marks Regulations at http://bit.ly/1xCOIEj  The consultation period for these proposed amendments is from October 1 to November 30, 2014.   As quoted in CIPO’s press release:

“The proposed regulatory amendments to the Trade-marks Regulations are required to enable Canada to accede to the Singapore Treaty on the Law of Trademarks, the Protocol relating to the Madrid Agreement concerning the International Registration of Marks and the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

The new regulations reflect the requirements of the trade-mark treaties and aim to increase legal certainty, streamline and clarify CIPO’s procedures, and align Canada’s trade-mark protection regime with international norms. The proposed amendments also include measures relating to the opposition regime and summary cancellation proceedings.”