Under the Trademark Law, a mark that clearly (or misleadingly) describes the provenance of a good or service often cannot be registered. What does a “place of origin” encompass then – a city? a country? a region? a road? lines on a map?
Based on a recent Federal Court decision, all of the above is the apparent answer.
In Nia Wine Group Co, Ltd v North 42 Degrees Estate Winery Inc, 2022 FC 241, the Federal Court determined that “place of origin” should be interpreted broadly “to refer to any geographical designation”. It was the first time a court had expressly considered the meaning of the phrase and will therefore serve as guidance for future claims unless it is appealed and overturned.
Everything under the sun
The rule against monopolizing place names is old. So in 1937, an English pharmaceutical company selling a liver tonic under the invented name of LIVRON had its registration expunged after learning that “Livron” was also the name of a French town (Boots (1937), 54 RPC 327 (EWCA)). Since at least 1888, this prohibition has been codified and now appears in paragraph 12(1)(b) of the Trademark Law.
While the basic rule is well known, the limits of what constitutes a “place of origin” are less well defined. This problem has taken on new importance as online research has swelled the list of potentially problematic names on the radar of trademark examiners. In the latter case, an Ontario winery sought to register NORTH 42 DEGREES for use in association with wine and the operation of a winery. He was opposed by a Niagara counterpart who argued that NORTH 42 DEGREES was not registrable due to it being one degree of latitude.
Judge Aylen agreed. She interpreted the word “lieu” (and its French equivalent “lieu”) as having “broad definitions and including specific references to places on the surface of the earth, both general and abstract”. Noting that in previous cases, everything from road names for city names had been found to be “places of origin”, she found parallels to latitudes and therefore concluded that 42 DEGREES NORTH was contrary to paragraph 12(1)(b) of the Act. EQUATOR and GREENWICH were cited as other examples of brands that might be highly sought after but unfair to monopolize.
Tips for brand owners
Those looking to plant a flag in a geographical designation need not be hopeless, as routes exist to navigate this concern.
First, owners should consider the now archived documents practice notice which explains how the Trademark Office reviewed marks with a geographic component. Where a mark has several potential meanings, there may be reason to claim that it is do not geography as a matter of first impression.
Second, owners of well-known marks may be able to establish that their mark has acquired sufficient distinctiveness to warrant protection. It can be a difficult road, although evidence like surveys that analyze consumer opinions can ease the way.
As the global market expands, the space for claiming geographical names seems to be shrinking. Trademark owners considering the use of a place name as a trademark in Canada would do well to take a lawyer as a guide.
While Nia Wine Group is not venturing into totally uncharted territory, it bears repeating as unexpected new types of geographical designations appear before the Canadian Trade-marks Office.