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Place of Origin

Updated: Jun 1

A recent decision of the Federal Court expands the grounds precluding the registration of a trademark because the Mark is clearly descriptive of the place of origin of goods or services applied for Nia Wine Group Co., Ltd. v. North 42 Degrees Estate Winery Inc. 2022 FC 241 https://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/521087/index.do


The Facts

The applicant sought to register the trademark NORTH 42 DEGREES in association with wine and operating a winery. The opponent opposed the application on the basis that the Mark was clearly descriptive of the place of origin of the goods and services as the applicant’s winery is located at or near the 42nd line of constant latitude in the northern hemisphere or near “north 42 degrees” and the wine originates from the same geographic region.


The Trademark Opposition Board

The Hearing Officer found that, for the purpose of section 12(1)(b) of the Trademarks Act, a trademark will be descriptive of a place of origin if it is a geographic name, and the goods and services originate from the location of the geographic name based on a recent decision of the Federal Court of Appeal.


The Hearing Officer concluded that the above approach was not applicable since the Mark was neither a geographic name referring to a place of origin nor is it the name of a place. The Mark would be seen by the average consumer, as a matter of immediate impression, as a geographical reference which alludes to a coordinate for a place or locality but does not clearly describe a place or “geographic region” in a way that is “easy to understand, self-evident, or plain.”


The Appeal to the Federal Court

Both parties filed additional evidence, but the evidence was immaterial or inadmissible. The Judge concluded that the question of the proper interpretation of “place of origin” was an extricable question of law reviewable on the standard of correctness.


Both parties referred to the previous decision of the Federal Court of Appeal. In that decision, the Court said to determine whether a geographic name is unregistrable as a trademark because it is clearly descriptive of place of origin, two questions must be considered. First, it must be determined whether the trademark is a geographical name; and second, the place of origin of the goods must be ascertained. If the geographic place name or location has other meanings, the perception of the ordinary consumer may be relevant.


When the Judge considered this decision and the wording of the Act, she concluded that a proper interpretation of the term “place of origin” should not be so restrictive as to exclude a designated line of latitude or longitude. In keeping with the purpose of section 12(1)(b), the term “place of origin” should be interpreted to refer to any geographical designation. Because of this, she was satisfied that the Hearing Officer adopted an incorrect approach in concluding the trademark in issue did not identify or name a place. The appeal was allowed, and the application refused.


Comment

The Hearing Officer and the Judge have different views concerning the meaning of the term “place of origin.” The word “place” normally suggests a particular position or space occupied by, in this case, a business. To the writer, the trademark in issue does not clearly designate a position or space, but the matter is close to the line.


If you have questions, please contact me at mckeown@gsnh.com.


John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370


These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

A version of this article originally appeared in the Lawyer’s Daily, published by LexisNexis Canada Inc.


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