On November 9, 2016, the Canadian Intellectual Property Office
(CIPO) issued a Practice Notice to clarify its position with
respect to trademarks that are geographic names. Section 12(1)(b)
of the Trademarks Act (the "Act") precludes the
registration of trademarks that are either "clearly
descriptive" or "deceptively misdescriptive" of,
among other things, the place of origin of the goods or services
with which they are associated.
The Notice is intended to bring CIPO's practice in line with
the recent decision of the Federal Court of Appeal in MC
Imports Inc. v. AFOD Ltd. 2016 FCA 60, issued February 23,
2016. [For a discussion of this decision,
click here.]
The Notice states that a trademark will be deemed clearly
descriptive of the place of origin of the associated goods or
services, and thus not registrable under Section 12(1)(b) of the
Act, if the trademark, whether depicted, written or sounded, is a
geographic name and the associated goods or services
