Location Matters: The Perils of Geographic Names as Trade-marks

Andrew Dixon
Articles

When choosing a trade or business name, it may seem like a good idea to incorporate the location of your business into the name. There are benefits: it is helpful for marketing, it gives your target audience an idea of where your business is and who your market is, it can help establish your business in a neighborhood, and it can help you build a brand based on community and locality.

However, using the location of your business in your trade or business name can cause difficulties when it comes to registering that name as a trade-mark. Under Section 12(1) (b) of the Trade-marks Act, a trade-mark is not registrable if it is clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services with which the trade-mark is used, unless that trade-mark has acquired distinctiveness through its use in Canada.

In Lum v. Dr. Coby Cragg Inc., 2015 FCA 293, the Federal Court of Appeal recently reviewed Section 12(1)(b), and considered the issue of whether a service provider can register, as a trade-mark, the name of a geographic location, in relation to its services.

In 2012, a dental practice owned by Dr. Cragg applied to register the trade-mark OCEAN PARK (the “Mark”) in association with dental services based on use since as early as 2000. The Mark was registered for use in association with “dental clinics” in 2013.

Prior to Dr. Cragg applying to register the Mark, another dentist, Dr. Lum, purchased an existing dental practice a block away from Dr. Cragg’s and changed the name of the practice to “Ocean Park Dental Group”. Then, after moving the practice, Dr. Lum changed the name to “Ocean Park Village Dental”, and advertised and displayed signage using the trade-name “Village Dental in Ocean Park”.

In early 2014, Dr. Cragg brought an action against Dr. Lum for infringement of the Mark. In response, Dr. Lum brought an action seeking to invalidate the Mark on the grounds that it was not registrable under Section 12(1)(b) of the Trade-marks Act.

In the trial court, the judge held that in order to prove that a trade-mark is not registrable under Section 12(1)(b), a plaintiff has to show: (1) that a trade-mark refers to a geographic location; and (2) that the location was indigenous to the services in question. Under this analysis, in order for the Mark to be non-registrable, a reasonable person would have had to equate the geographic location “Ocean Park” with dental services. Based on the evidence, the trial judge found that this was not the case, and the court dismissed the action to invalidate the Mark.

However, the Court of Appeal held that this was not the correct analysis. Instead, the analysis under section 12(1)(b) should focus on the type of services involved, the average consumers to whom the services are offered, and the character of the geographic location.

Under this analysis, if the trade-mark is the name of the geographic location where the services or goods are provided, then the trade-mark is descriptive within the meaning of Section 12(1)(b) and non-registrable because the trade-mark is descriptive of the place of origin of the services or goods.

The Court of Appeal stated that trade-marks that are descriptive of geographic locations are not registrable, so as to prevent a single service provider from monopolizing the name of a geographic location by precluding other service providers from using that name to describe their own services.

In this case, the problem identified by the Court of Appeal was that while geographic locations can be used in business names and for other purposes, they often do not meet the key requirement of a registrable trade-mark, that being the requirement of distinctiveness. The Mark as registered, OCEAN PARK, was never used by itself in association with dental services. It was always used in the context of the name Ocean Park Dental. In this case, upon hearing “Ocean Park”, consumers would not think about Dr. Cragg’s dental services; as such, it could not be said that the Mark had acquired distinctiveness. Therefore, the Mark was declared invalid and struck from the Trade-mark Register.

The Trade-mark Opposition Board recently followed the Court of Appeal’s ruling in Lum. In a case with similar facts to Lum (H.R. Herchen Professional Corporation v. John Caldwell Professional Corporation, 2016 TMOB 18), the Board applied the ruling in Lum and dismissed an application to register MOUNT ROYAL DENTAL CENTRE on the basis that “Mount Royal” was clearly descriptive of the Calgary neighborhood where the dental centre was located.

These cases are a warning to businesses to be careful when choosing geographic locations as business or trade names which they may wish to register as a trade-mark. The use of a geographic location within the context of a broader trade-mark may be permissible. However, it is unlikely that a business can expect to register a trade-mark consisting purely of a geographic location, unless that business and the trade-mark have acquired significant distinctiveness through lengthy and extensive advertising and use throughout Canada.