The simple and prudent answer is ‘no’. A trademark is not registrable if it is clearly descriptive, or deceptively misdescriptive of the place of origin of the goods associated with the mark.
The Canadian Trademarks Office recently issued a new practice notice clarifying its practice with respect to marks that describe a place of origin. This practice notice was issued in response to the Federal Court of Appeal decision in MC Imports Inc. v. AFOD Ltd. [2016 FCA 60].
- A trademark will be found to be “clearly descriptive of the place of origin” if the trademark is a geographic name and the associated goods originate from that geographic location.
- A trademark may be misdescriptive if it consists of a geographic name and the associated goods do not emanate from that geographic location. Whether the mark is deceptively misdescriptive, contrary to s.12(1)(b) of the Trademarks Act, will depend on whether Canadian consumers could be misled into thinking that the associated goods actually originated from that geographic location.
- If Canadian consumers would view the primary or predominant meaning of the trademark as the geographic name, then a trademark will be deemed to consist of a geographic name, notwithstanding that it could have other meanings.
For further information, please contact Paula Clancy