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.