Deceptively Misdescriptive Trademarks

Deceptively Misdescriptive Trademarks

Deceptively misdescriptive trademarks are not registrable under section 12(1)(b) of the Trademarks Act, which states:

When trade-mark registrable

12 (1) Subject to section 13, a trade-mark is registrable if it is not

(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;



 



Place of Origin Deceptively Misdescriptive Trademarks under Paragraph 12(1)(b) of the Trade-marks Act

Clearly Descriptive

In accordance with MC Imports Inc. v. AFOD Ltd., 2016 FCA 60 CanLii, a trademark is clearly descriptive of the place of origin if the trademark, whether depicted, written or sounded, is a geographic name and the associated goods or services originate from the location of the geographic name.

Deceptively Misdescriptive

A trademark is misdescriptive if the trademark is a geographic name and the associated goods or services do not originate from the location of the geographic name. If a trademark is misdescriptive, further analysis is required to determine if it is deceptive.

In assessing whether a trademark is deceptively misdescriptive, it must be determined whether the ordinary consumer would be misled into the belief that the associated goods or services had their origin in the location of the geographic name in the trademark.

CIPO Practice Notice on Place of Origin

Deceptively Misdescriptive Trademark Cases:

Corporation Cuba Ron (SA) v Hela Wines & Spirits APS, 2009 CanLII 82139 (CA TMOB), 2009 CanLII 82139, 81 CPR (4th) 217 (TMOB) (Cuba Ron)

[13]     A composite mark, when sounded, is not registrable pursuant to s. 12(1)(b) of the Act if it contains word elements that are clearly descriptive or deceptively misdescriptive of the place of origin of the wares and are also the dominant feature of the mark [see Best Canadian Motor Inns Ltd. v. Best Western International, Inc(2004), 2004 FC 135 (CanLII)30 C.P.R. (4th) 481 (F.C.T.D)].   Further, one must consider whether the deceptively misdescriptive words “so dominate the applied for trade-mark as a whole such that… the trade-mark would thereby be precluded from registration” [Canadian Council of Professional Engineers v. John Brooks Co(2004), 2004 FC 586 (CanLII)35 C.P.R. (4th) 507 (F.C.T.D.)].

[14]     In the present case, the word elements of the Mark include the word CUBA, the phrase MADE IN DENMARK, which appears in two different locations on the Mark, the phrase THE REVOLUTIONARY VODKA, which also appears twice, and reference to the Applicant’s website www.cubavodka.com.  I find that the dominant feature of the Mark is the word CUBA as it appears in much larger and bolder font that any other word or design on the Mark, and also appears at the top of the design Mark.

[Underlining added]

[41]           Ultimately, the Registrar concluded that the composite mark was registrable because there was no evidence showing that Cuba was known for vodka.

Havana Club Holding S.A. v Ron Matusalem & Matusa of Florida, Inc., 2016 TMOB 113 CanLII

Havana Club Holding S.A. opposed the registration of the SPIRIT OF CUBA trademark shown below (the Mark). It was the subject of CIPO application No. 1,554,074 by Ron Matusalem & Matusa of Florida, Inc. (the Applicant), a corporation organized and existing under the laws of the State of Florida. The goods claimed were rum produced in the Dominican Republic. This application includes a design and a statement “Product of Dominican Republic.

THE SPIRIT OF CUBA LABEL DESIGN

 

[12]           In The Spirit of Cuba, the pleaded grounds of opposition were that the trade-mark was not registrable under section 12(1)(b) of the Act and not distinctive under section 2 of the Act because it was either clearly descriptive or deceptively misdescriptive of the place of origin of the goods (the Registrar considered that the pleadings did not put into issue the registrabililty and distinctiveness of the trade-mark in association with the services). Ultimately, the Registrar concluded that the trade-mark THE SPIRIT OF CUBA was deceptively misdescriptive of the place of origin of the goods “rum” that did not originate from Cuba. The Registrar’s decision was confirmed by the Federal Court and the Federal Court of Appeal [Ron Matusalem & Matusa of Florida Inc v Havana Club Holding Inc, SA, 2010 FC 786 (CanLII)86 CPR (4th) 4372011 FCA 244(CanLII)96 CPR (4th) 218].

….

[37]           The Opponent contends that “THE SPIRIT OF CUBA” is the dominant feature of the Mark as these words clearly stand out and immediately attract consumer’s attention because:

•   The words are located at the top of the design.

•      The size of the letters is bigger than the other written matter.

•      The words are in bold characters.

•      The “logo” on the left side is not big enough to dominate the visual of the Mark.

•      The “rectangular background” is a weak and non-distinctive element of the Mark.

•      The words “PRODUCT OF DOMINICAN REPUBLIC” appear in the lower portion of the Mark, in a smaller font, which is actually difficult to read.

•      The words “PRODUCT OF DOMINICAN REPUBLIC” are purely descriptive and have no significant impact for the consumers.

[38]           The Opponent also submits that the phrase “PRODUCT OF DOMINICAN REPUBLIC” would not be perceived as a distinctive feature of the Mark and consumers would most likely not even pay attention to this element of the Mark.

[50]           Thirdly, I agree with the Opponent that, as a matter of first impression, the phrase “THE SPIRIT OF CUBA” is the dominant feature of the Mark, and the phrase “PRODUCT OF DOMINICAN REPUBLIC” is likely not to be perceived by a consumer as part of the Mark. In other words, the Applicant did not convince me that the Mark as a whole cannot be found deceptively misdescriptive of the place of origin of the Goods because of the phrase “PRODUCT OF DOMINICAN REPUBLIC” appearing “in the middle of the label”.

….

[51]           In the end, it is my view that:

a)   The Mark would be sounded by the dominant phrase “THE SPIRIT OF CUBA”.

b)   The average person would sound the Mark as “THE SPIRIT OF CUBA”.

c)   The phrase “PRODUCT OF DOMINICAN REPUBLIC” is not distinctive of any particular trader.

d)   The representation of a swallow and design feature of the Mark are not sufficient to render the Mark as a whole distinctive and registrable.

[52]           Thus, I conclude that the Mark as a whole was deceptively misdescriptive of the place of origin of the Goods as of November 28, 2011 or June 18, 2014.

 

David Michaels

David Michaels, J.D., B.Eng., CHRM is a trained attorney who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993.

David is a legal blogger, brand consultant, an eCommerce entrepreneur, and an aeronautical engineer.
http://ca.linkedin.com/in/davidtmichaels/

Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author’s notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.

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