You Don't Know Where I'm From: Clarifying The Test For Geographic Trademarks

The Federal Court of Appeal has released another decision solidifying the court's recent trend¹ of refusing to recognize geographical marks that are descriptive of place of origin: MC Imports Inc. v. AFOD Ltd., 2016 FCA 60.

The appellant, an importer, packager and distributor of fish and seafood products, registered and used the trademark LINGAYEN in association with its products.  When the appellant brought an action for infringement of its trademark, the respondent argued the trademark was invalid as being clearly descriptive or deceptively misdescriptive of the place of origin—Lingayen is a municipality in the Philippines known for its shrimp paste products.

The court confirmed that the purpose of the rule against trademarks that are clearly descriptive of the place of origin is to prevent a monopoly over a location description to the detriment of competitors in the same geographic area.