On November 8, 2016, the Canadian Intellectual Property Office (CIPO) published a new Practice Notice to help clarify its position regarding applications to register geographic names as trademarks that will be of interest to charities and not-for-profits. The Trademarks Act precludes the registration of trademarks that are either “clearly descriptive” or “deceptively misdescriptive” of the place of origin of the goods and services.
The Practice Notice explains that CIPO will consider a trademark to be clearly descriptive of the place of origin of the associated goods and services if the trademark, whether depicted, written, or sounded, is a geographic name and the associated goods and services originate from that geographic location. As an example, the trademark SWITZERLAND would likely not be registrable in association with chocolate that originates from Switzerland.
CIPO will determine if a trademark is deceptively misdescriptive using a two-step process. First, CIPO will be consider the trademark misdescriptive if “the trademark is a geographic name and the associated goods or services do not originate from the location of the geographic name.” Second, once this determination has been made, further analysis is required to determine if the trademark is deceptive, since a misdescriptive trademark is registrable, but a “deceptively” misdescriptive trademark is unregistrable. In determining if the trademark is deceptive, CIPO will consider “whether the ordinary consumer would be misled into the belief that the associated goods or services had their origin in the location of the geographic name in the trademark.” If the ordinary consumer would not be misled, then the trademark is likely registrable.
In order for a mark to be unregistrable because it is clearly descriptive or deceptively misdescriptive of the place of origin of the goods and services, the trademark must actually be a “geographic name”. The Practice Notice clarifies that a trademark will be considered a geographic name “if research shows that the trademark has no meaning other than as a geographic name.” In addition, a trademark will be determined to be a geographical name if the trademark, despite having multiple meanings, has a primary or predominant meaning as a geographic name. The Practice Notice says that, “[t]he primary or predominant meaning is to be determined from the perspective of the ordinary Canadian consumer of the associated goods or services.”
This new Practice Notice suggests that CIPO is very likely to consider a trademark to be unregistrable if it is a geographic place where the associated goods and services emanate from. As such, charities and not–for-profits should proceed with caution in registering trademarks that contain geographic places and obtain legal advice prior to proceeding.