Federal Court of Canada Concludes That Trademark Consisting Of Line Of Latitude Is Unregistrable

On February 22, 2022, the Federal Court of Canada (the Court) issued its decision in Nia Wine Group Co., Ltd. v North 42 Degrees Estate Winery Inc., 2022 FC 241, in which it held that “place of origin” under section 12(1)(b) of the Trademarks Act (the Act) can include a line of latitude.

The Act prohibits the registration of trademarks which are clearly descriptive or deceptively misdescriptive of the place of origin of the goods and services associated with a trademark.

In this case, Nia Wine Group Co., Ltd. opposed a trademark application for NORTH 42 DEGREES filed by North 42 Degrees Estate Winery Inc. for wine and operation of a winery on the basis that it was clearly descriptive of the place of origin, and not distinctive. The Trademark Opposition Board (TMOB) rejected the opposition, concluding that the trademark NORTH 42 DEGREES would not be plainly recognizable as a place of origin or the name of a place.

On appeal, both parties filed new evidence.  The Court found that the new evidence was either immaterial or inadmissible, and therefore, the Court concluded that the applicable standard of review was palpable and overriding error, with one exception.  The Court stated that the question of the proper statutory interpretation of “place of origin” under the Act was an extricable question of law reviewable on the standard of correctness.

The primary issue was whether the trademark, NORTH 42 DEGREES, was a “place of origin”.  In determining what constitutes a “place of origin”, the Court undertook an analysis of the statutory language of the Act and noted that section 12(1)(b) of the Act has been recognized as serving a public interest purpose since it prevents traders from monopolizing words that describe the origin of goods.  In keeping with the purpose of section 12(1)(b), Justice Aylen determined that the term “place of origin” should be interpreted to refer to any geographical designation, including a designated line of latitude or longitude. 

Thus, given that a “place of origin” includes a specifically designated line of latitude, and both parties’ evidence established that the goods and services originated from a farm and winery located along the 42nd parallel or North 42 degrees latitude, the Court concluded that the trademark NORTH 42 DEGREES is unregistrable as it clearly describes the place of origin of the goods and services, contrary to section 12(1)(b) of the Act.  The Court allowed the appeal, set aside the TMOB’s decision, and refused the trademark.

Summary By: Michelle Noonan