Federal Appeal

Industrial and Intellectual Property

Evidence of prior use not sufficient to demonstrate trademark had acquired distinctiveness

MC Imports (MC) imports and sells Filipino food products under trademark LINGAYEN, a municipality in Philippines known for bagoong shrimp paste products. It commenced motion for summary trial relating to alleged infringement of trademark by AFOD, which imports food products from Philippines. AFOD challenged validity of trademark registration under Trade-marks Act (Can.). Trademark is not registrable if “either clearly descriptive or deceptively misdescriptive ... of the character or quality of the goods or services in association with which it is used or proposed to be used ... or their place of origin” except where trademark has become distinctive due to use. MC began using LINGAYEN in Canada in association with its wares in 1975 and there has been continuous use since that time. Federal Court judge granted motion for summary trial but found trademark not registrable and therefore invalid. He found it was clearly descriptive of place of origin of wares in relation to which it was used and was not distinctive. MC’s appeal dismissed. Correct approach in context of place of origin not dependent on knowledge of average Canadian consumer. Whether geographic name is unregistrable determined by determining that trademark is geographical name; by determining place of origin of wares and by assessing assertions of prior use. Determining whether impugned trademark is geographic name may require resort to consumer perceptions where name has other meanings. This ought to be considered from perspective of ordinary consumer of products with which trademark is associated. If wares or services originate in place referred to by trademark, then trademark is clearly descriptive of place of origin. If not, further analysis required to determine whether it is deceptively so. Descriptive trademark may become distinctive despite descriptiveness through use. If it has become distinctive, it is registrable despite being descriptive. This requires evidence that from perspective of relevant public, people who actually use product, trademark has become distinctive of that product. Lingayen is municipality in Philippines and MC’s goods originated in Lingayen. Trademark clearly described place of origin of goods with which it was associated. MC’s evidence of prior use not sufficient to meet burden of demonstrating it had acquired distinctiveness. Trademark’s registration was invalid.

MC Imports Inc. v. AFOD Ltd. (Feb. 23, 2016, F.C.A., Johanne Trudel J.A., A.F. Scott J.A., and Yves de Montigny J.A., A-569-14) Decision at 247 A.C.W.S. (3d) 924 was affirmed. 263 A.C.W.S. (3d) 194.

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