MC Imports Inc. v. AFOD Ltd., 2016 FCA 60

Trademarks Act – Section 12(1)(b) – Geographical Place Name – Clearly Descriptive – Registrability – Federal Court of Appeal

We acted as appellate counsel for AFOD Ltd., a company which imported various fish and shrimp based products including bagoong from the Philippines. AFOD labeled their products as “Lingayen Style”. The Appellant, MC Imports Inc. sued AFOD for infringement of its registered trademark “Lingayen”. The Lingayen region in the Philippines is well known for producing fish and shrimp based products including bagoong.

AFOD brought a summary trial motion. On hearing the motion, Justice Rennie dismissed MC Imports Inc. claim and struck the trademark on the basis that they were not entitled to improperly monopolize a geographic place name which clearly described the origin of the goods and that was known as a source of such goods.

Justice Rennie, also noted that there was “arguably a jurisprudential divide” about the appropriate test and who made up the class of “ordinary consumer” as that phrase was used in determining whether there had been confusion.

In the Federal Court of Appeal, we successfully argued, on AFOD’s behalf, that there was not such a divide and that the case law could be reconciled on the basis that section 12(1)(b) of the Trademark’s Act was an absolute prohibition on using a geographic place name as a Trade Mark where that name is clearly descriptive of the place of origin of the products being sold.

The decision is now the leading case in Canada on this issue. View Reasons for Judgment