Place of Origin — Paragraph 12(1)(b) of the Trade-marks Act
Publication Date: 2016-11-09
This notice is intended to clarify the Trademarks Office practice with respect to applying the provisions relating to place of origin in paragraph 12(1)(b) of the Trade-marks Act (hereinafter referred to as the "Act") to geographical names.
In accordance with MC Imports Inc. v. AFOD Ltd., 2016 FCA 60, a trademark is clearly descriptive of the place of origin if the trademark, whether depicted, written or sounded, is a geographic name and the associated goods or services originate from the location of the geographic name.
A trademark is misdescriptive if the trademark is a geographic name and the associated goods or services do not originate from the location of the geographic name. If a trademark is misdescriptive, further analysis is required to determine if it is deceptive.
In assessing whether a trademark is deceptively misdescriptive, it must be determined whether the ordinary consumer would be misled into the belief that the associated goods or services had their origin in the location of the geographic name in the trademark.
A trademark will be determined to be a geographic name if research shows that the trademark has no meaning other than as a geographic name. In addition, a trademark will be determined to be a geographical name if the trademark, despite having multiple meanings, has a primary or predominant meaning as a geographic name. The primary or predominant meaning is to be determined from the perspective of the ordinary Canadian consumer of the associated goods or services.
Origin of Goods or Services
If a trademark is determined to be a geographic name, the actual place of origin of the associated goods or services will be ascertained by way of confirmation provided by the applicant. In determining the place of origin of the associated goods or services the address of an applicant is irrelevant.
This practice notice is intended to provide guidance on current Trademarks Office practice but is not binding on the Office. In the event of any inconsistency between the Trademarks Examination Manual and this practice notice, the notice is to be followed. In the event of any inconsistency between this practice notice and the applicable legislation, the legislation must be followed.
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