CIPO Publishes Place of Origin Practice Notice

On November 9, 2016, the Canadian Intellectual Property Office (CIPO) published a practice notice entitled “Place of Origin – Paragraph 12(1)(b) of the Trade-marks Act” (the Notice).  The Notice is intended to clarify the application of the provisions of Section 12(1)(b) of the Trade-marks Act with respect to trademarks that are clearly descriptive or deceptively misdescriptive of the places of origin of the goods and services in association with which the marks are used. 

Geographic Name

A trademark will be considered a geographic name if it either: (1) has no other meaning; or (2) has multiple meanings, but has a primary or predominant meaning as a geographic name from the perspective of the ordinary Canadian consumer.

Clearly Descriptive

A trademark is clearly descriptive of the place of origin if, whether depicted, written or sounded, the trademark is a geographic name and the goods or services associated with the mark originate from the location of the geographic name.

Deceptively Misdescriptive

A trademark is misdescriptive if the trademark is a geographic name and the goods or services associated with the mark do not originate from the geographic location.  When assessing whether the trademark is deceptively misdescriptive, the Examiner must determine whether the ordinary Canadian consumer would believe that the goods or services originated in the geographic location in the mark.

Origin of Goods or Services

If a trademark is determined to be a geographic name, the applicant will be requested to provide confirmation of the actual place of origin of the goods or services associated with the trademark.

Summary By: Michael House