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When Trademarks and Geography Don’t Mix

Published: 07 September 2023

You are the proud manufacturer of a product or a service originating from your home area, and you wish to highlight its place of origin by naming your product or service after a river, a county, a village, or a neighbourhood? Unfortunately, there are many risks in doing so.

The Trademarks Act prohibits registering a mark that gives a clear or false and misleading description as to where the product or service in association with which it is intended to be used originates. If such mark cannot be registered, it means that anyone can use the name of that place of origin for their goods or services coming from that area.

Continent, country, province, state, region, city, neighbourhood and street names can all be considered as geographical places. The Federal Court in the recent case of NIA Wine Group Co, Ltd. v. North 42 Degrees Estate Winery Inc. found that even a latitude or longitude line should be considered as a place of origin. A design trademark consisting of a depiction of a geographical place may also be considered as a geographical name for that place. For example, a map of Italy used to market wines would constitute a description of the wines’ place of origin.

What Does a Mark Describing a Place of Origin Really Mean?  

On one hand, a trademark clearly describes its place of origin if:

  • it matches the name of a place; and

  • the goods or services associated with it comes from that place.

On the other hand, a trademark falsely and deceptively describes the place of origin if:

  • it refers to a geographic name which is not the place of origin of the related goods or services; and

  • the average consumer would be misled into believing that the goods or services come from that place.

In this last scenario, the reputation of certain cities, regions or countries, like Switzerland, which is known for its chocolate, will be taken into account to determine whether the average consumer would be misled into believing that the goods or services come from that place. By contrast, using a street name that has no reputation will not be considered a false and misleading description of the goods and services’ origin.

Interestingly, a trademark will be considered a geographical name if searches reveal that it has no meaning other than a geographical one. Therefore, a mark that can be considered both as a place and as a proper or common name could be considered registrable.

A Commercial Decision to Be Carefully Assessed

Aside from the risks associated with registering a mark that consists of a location name, other issues may arise as to the use of such a mark. There is a strong risk that such a mark will have a weak distinctive character, as all other companies doing business in the same area may also refer thereto. One must also consider the potential consequences for exports. For instance, a mark bearing the name of a location other than the one where the products are manufactured could potentially prevent the export of the products to that location.

Our trademark professionals are highly experienced and will be pleased to assist you in this matter as well as in the protection of your trademarks in Canada and abroad.

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As the partner in charge of BCF’s Trademark group, Johanne Auger supports businesses of all sizes in developing and supervising national and international trademark portfolios. Her global vision of issues, her excellent listening skills and her personalized approach help her develop protection strategies tailored to the realities and needs of each client, whether in Quebec, Canada or worldwide. With more than 25 years of experience in trademark protection, intellectual property management and litigation, Johanne advises start-ups, SMEs and large companies operating in the technology, agri-food, pharmaceutical, tourism, cultural, finance, manufacturing, textiles and retail industries. She also leads BCF's Internet group, which offers businesses strategic legal advice regarding their online presence. An excellent communicator eager to share her knowledge, Johanne regularly gives trademark lectures to various organizations in Europe, Asia and North and South America. She provides customized training to senior management and marketing teams from several companies. She has also been the Director of the intellectual property courses offered by McGill University and the Intellectual Property Institute of Canada and has served on the Institute’s board of directors. Concerned with better representation of women in the workplace, she co-directs BCF’s Parity and Inclusion Committee. Johanne Auger will be attending the UNIFAB conference in Paris, FR, March 21st to March 22nd, 2024.  Johanne Auger will be attending the International Trademark Association Annual Meeting in Atlanta, GA, May 18th to May 22nd, 2024. 

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