Can a Place of Origin Be Trademarked?

Trademarks are an important aspect of your brand. Your products and services are identified through your trademark. Analyzing what you can register as a trademark is difficult, especially if you have a geographic name in your trademark. While you can register a geographic name, the issue lies with whether the term is ‘clearly descriptive’ or ‘deceptively misdescriptive’ in the English or French languages of the place of origin of goods and services.

Clearly Descriptive or Deceptively Misdescriptive Geographical Names

If the geographic name is the same as the actual place of origin of the goods, the trademark will be considered clearly descriptive and hence unregistrable.

If the geographic name is not the same as the place of origin of the products, the mark can be termed as deceptively misdescriptive. Because it misleads the consumer in assuming that the goods have originated from the location of the geographic name.

The consumer perception is usually relevant only in cases of deceptively misdescriptive geographic names, which has been quite clearly portrayed in the two cases namely, Parma and Leyda. In Parma case, the registered trademark PARMA was used in association with meat products. The Federal Court held that even though Parma was a city in Italy that manufactured meat products, the trademark PARMA, was not deceptively misdescriptive since the consumer in Canada were not aware of Parma as a region in Italy. Hence, it would not mislead them to assume that the meats sold under PARMA had their origin in Parma, Italy.

In the case of Leyda, the trademark LEYDA was clearly descriptive of wine produced in the region of Leyda in Chile. The Federal Court did not take into account the consumer perception and stated that a trader cannot be permitted to monopolize a foreign wine district in Canada by registering it as a trademark.

Even when the mark has meanings other than a place name, it can still be considered a geographical name if the trademark primarily or predominantly means a geographic name. This is determined by the perspective of the ordinary consumer. In case the trademark is determined as a geographic name, confirmation needs to be provided by the applicant to ascertain the actual place of origin of the goods or services. This approach of analyzing consumer perception is used when the mark has multiple meanings.

In another case of MC Imports Inc. v. AFOD Ltd., the owner of trademark LINGAYEN sued a competitor for infringement. The competitor sold shrimp paste under a different brand but the packaging included a phrase ‘Lingayen Style’ describing the product. It happened that, Lingayen is a municipality in the Philippines known for its distinctive shrimp paste products. The court found that the use of the phrase ‘Lingayen Style’ was just used to describe the place of origin of goods and not for trademark purpose. Therefore there was no infringement.

Getting a geographical name registered can be complicated. Hence, if you have a geographic name in your trademark, it is advisable to seek professional advice.