By Sepal Bonni

Charities and not-for-profits looking to register their trademarks should keep in mind that trademarks which are descriptive of a place of origin of goods or services are unregistrable due to a lack of distinctiveness. In the February 22, 2022 decision of Nia Wine Group Co., Ltd. v North 42 Degrees Estate Winery Inc., the Federal Court found that North 42 Degrees Estate Winery Inc’s (the “Applicant”) trademark contravened section 12(1)(b) of the Trademarks Act (“TMA”) and that therefore its trademark application should be refused in its entirety.

The winery filed an application for the trademark NORTH 42 DEGREES (“proposed trademark”) in Canada in June 2016. In March 2017 Nia Wine Group Co., Ltd. (the “Opponent”) filed a Statement of Opposition (the Opponent operated a winery in the Niagara Region and sold wine in Canada under various brand names, including NORTH 43º). One of the specific grounds of opposition that the Opponent raised was that the proposed trademark “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” contrary to 12(1)(b) of the TMA.

However, the Opponent was unsuccessful in opposing the trademark application before the Trademarks Opposition Board (the “Board”). Even though the Board accepted that there was evidence which established that the Applicant’s goods and services came from a farm located along the 42nd parallel, it concluded that “the Mark is neither a geographic name referring to a place of origin nor … the name of a place.” Therefore, while the Board considered the proposed trademark to be a “geographical reference” that alluded to a coordinate for a place, it was not a self-evident description of a place.

The Opponent then appealed the Board’s decision to the Federal Court. After considering some issues regarding evidence and the standard of review, the court directed its analysis to whether the Board erred in concluding the proposed trademark did not contravene 12(1)(b) of the TMA. The undisputed test for the application of 12(1)(b) was set out by the Federal Court of Appeal in MC Imports Inc v AFOD Ltd. Only the first two parts of the test were relevant to the court’s analysis: determining whether the trademark was a geographical name; and whether the place of origin of goods and services is the location of the geographic name. In MC Imports, the Federal Court of Appeal used both the phrase “geographical name” as well as “geographical location” in its analysis under 12(1)(b). Therefore, the court in this case concluded that there was no requirement “that a mark, to be unregistrable under section 12(1)(b), must use a geographical name.” Even if a geographical name was required, “[e]ach line of latitude and longitude has a distinctive designation (in this case, North 42 degrees)” and therefore “does in fact have a name”.

Further, when considering what constituted a “place of origin”, the court concluded that the term should be interpreted as referring “to any geographical designation.” For these reasons, the court found that the proposed trademark NORTH 42 DEGREES contravened section 12(1)(b) of the TMA and that the Applicant’s trademark application was refused in its entirety.

The court’s decision in this case provides charities, not-for-profits, and other organizations with further information about when a location-based trademark application may be unregistrable. While the Canadian Intellectual Property Office’s practice notice about the application of 12(1)(b) refers to “a geographic name” and goods originating from the location of the geographic name, the court’s decision illustrated a somewhat broader understanding and included terms indicative of geographic location, such as latitude and longitude.

​Read the April 2022 Charity & NFP Law Update