Is Your Clearly Descriptive Place Of Origin Mark Distinctive? Prove It!

The Federal Court of Appeal recently clarified the applicable test for challenging a trade-mark that is clearly descriptive of a good's place of origin, pursuant to s. 12(1)(b) of the Trade-marks Act, RSC 1985, c. T-13 (the "Act"). The Court also articulated how such a trade-mark could still be ruled distinctive, and, accordingly valid: good old fashioned proof!

The context for the decision in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60 ¹ was a dispute between two importer-distributors of bagoong, a fish and shrimp based condiment from the Philippines.

Case Background

The action began as a trade-mark infringement proceeding commenced by MC Imports Inc. ("MC Imports"), which owned the trade-mark LINGAYEN. The trade-mark was registered in August 2003 and MC Imports had licensed the trade-mark until the trade-mark was assigned to it in October 2011. Prior to the trade-mark being registered, MC Imports' predecessor company sold products using the same LINGAYEN mark