Under the Trademarks Act, a trademark that clearly describes (or deceptively misdescribes) where a good or service comes from often cannot be registered. What then does a “place of origin” encompass – a city? a country? a region?
a road? lines on a map?
Based on a recent decision of the Federal Court, all of the above, is the apparent answer.
In Nia Wine Group Co, Ltd v North 42 Degrees Estate Winery Inc, 2022 FC 241, the Federal Court determined “place
of origin” should be broadly interpreted “to refer to any geographical designation.” It was the first time a court expressly considered the meaning of the phrase, and so will serve as direction for future applications, unless it
is appealed and overturned.
Everything under the sun
The rule against monopolizing place names is longstanding. Such it was that, in 1937, an English drug company selling a liver tonic under the invented name LIVRON had their registration expunged upon learning that “Livron” was also the name
of a French town (Boots (1937), 54 RPC 327 (EWCA)). Since at least 1888 this prohibition has been codified, it now being present in paragraph 12(1)(b) of the Trademarks Act.
While the basic rule is well-known, the boundaries of what constitutes a “place of origin” have been less well-defined. This problem has taken on new significance as online searching has swollen the list of potentially-problematic names on the radar of trademark examiners. In the latest case, an Ontario winery sought to register NORTH 42 DEGREES for use in association with wine and the operation of a winery. It was opposed by a Niagara counterpart who contended that NORTH 42 DEGREES was unregistrable on account of being a degree of latitude.
Justice Aylen agreed. She interpreted the word “place” (and its French equivalent “lieu”) to have “broad definitions and include specific references to places on the earth’s surface, both general and abstract.”
Noting that in prior cases everything from road names to city names had been found to be “places of origin,” she found parallels to latitudes and so held NORTH 42 DEGREES to be contrary to 12(1)(b) of the Act. EQUATOR and GREENWICH were highlighted as further examples of marks that might be highly
sought-after but unfair to monopolize.
Advice for brand owners
Those looking to plant a flag in a geographic designation need not be without hope, as routes do exist to navigate this concern.
First, owners should consider the now-archived practice notice that explains how the Trademarks Office examined marks with
a geographic component. Where a mark has multiple potential meanings, there may be room to argue it is not geographic as a matter of first impression.
Secondly, owners of well-known marks may be able to establish their trademark has acquired distinctiveness enough to warrant protection. This can be a tough road, though evidence like surveys that chart the views of consumers can make the path easier.
Conclusion
As the global marketplace gets bigger, the space to claim geographic names appears to get smaller. Brand owners exploring the use of a place name as a trademark in Canada would do well to take a lawyer as a guide.
While Nia Wine Group does not venture into wholly unknown territory, it is worth remembering as new and unexpected types of geographic designations appear before the Canadian Trademarks Office.
For further information on how to strategically protect your brand in Canada, please contact a member of our firm’s Trademarks and Brand Protection team.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.