Trademarks And Geographic Place Names In Canada

The recent decision of the Federal Court of Appeal in MC Imports Inc. v Afod Ltd., 2016 FCA 60 (F.C.A., Trudel J.A., February 23, 2016) provides some much needed guidance on the proper test for assessing the registrability of trademarks that describe the place of origin of the goods or services with which they are associated. The Court of Appeal confirmed that if a mark contains the name of a geographic location from where the goods or services emanate, then the mark is clearly descriptive of the place of origin and not registrable. The perception of the consumer is irrelevant for purposes of the analysis.

Section 12(1)(b) of the Trademarks Act precludes registration of trademarks that are either clearly descriptive or deceptively misdescriptive of the character or quality of the goods or services with which they are associated, or their place of origin. Canadian jurisprudence has, however, struggled with the appropriate legal test to apply in cases dealing with