Trademarks Decisions: Motion For Summary Trial Granted: But Plaintiff’s Claim Is Struck And Its Trademark Is Struck From The Register (Intellectual Property Weekly Abstracts Bulletin (Week Of December 8th, 2014)

Trademark Decisions

Motion for Summary Trial Granted: but Plaintiff's Claim is Struck and its Trademark is Struck from the Register MC Imports Ltd. v. Afod Ltd., 2014 FC 1161

This was a motion for summary trial relating to an alleged trademark infringement by the Defendant of the trademark LINGAYEN held by the Plaintiff. In response, the Defendant counter-claimed against the validity of the trademark's registration. The LINGAYEN trademark covers Filipino food products and food supplier and distributor services.

The Defendant imported from the Philippines a shipment of food products, which contained labels marked with its trademark, as well as language of "Lingayen Style" in lesser-script immediately below the trademark. The Defendant sold its food products in 2011, with total revenues of those products being less than $3,500. The Plaintiff claimed that LINGAYEN was a discrete and distinctive word, generally not known to Canadians or in common use in the English language. The Defendants, on the other hand, alleged that Lingayen is a place in the Philippines known to Canadian consumers, that Lingayen is also known to Canadians for certain food products, and that products from Lingayen are known for their distinct aroma and flavour. The Court was, therefore, asked to consider if it was appropriate to determine this matter by summary trial, and whether the Plaintiff's claim for infringement should be dismissed because the trademark is invalid (or even independent of the trademark's validity).

The Court found that a majority of the factors to be considered when assessing the appropriateness of a summary trial weighed in favour of summary proceedings in this case. The Court then considered the validity of the trademark under section 12(1) (d) of the Trademarks Act (the "Act"), noting that "a mark can only be clearly descriptive or deceptivelymisdescriptive of place of origin if it would be perceived by the ordinary consumer as relating to the ware's place of origin." Otherwise, the Court held, it could neither describe nor deceive. The Court also recognized the alternate view that the perspective of the "ordinary consumer" may be irrelevant in this context because "any mark identifying a ware's authentic place of origin is invalid regardless of the public's perception of it." While the Court did not resolve this "jurisdictional divide" (which it denied even exists), it found that the trademark was invalid in any event. According to the Court, it...