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"Wine" Not? North 42 Degrees’ Trademark Application Refused


March 28, 2022

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In Nia Wine Group Co., Ltd v North 42 Degrees Estate Winery Inc., 2022 FC 241, the Federal Court allowed the appeal brought by Nia Wine Group Co., Ltd (“Nia Wine”) and overturned the Trademarks Opposition Board’s (the “Board”) decision to allow the trademark application by North 42 Degrees Estate Winery (“North 42”) of the trademark “NORTH 42 DEGREES”.


The Federal Court found that the Board erred in its application of section 12(1)(b) of the Trademarks Act, RSC 1985, c. T-13 (the “Act”) by interpreting “place of origin” too restrictively.


Background


Both Nia Wine and North 42 operate wineries and sell wine in Ontario. Nia Wine sells wine under various brand names, including NORTH 43º. The application at issue was made by North 42 to register “NORTH 42 DEGREES” in association with their wine, as well as their winery operations.


In May 2021, the Board allowed North 42’s trademark application and Nia Wine brought the present appeal.


The Board’s Decision


In opposing North 42’s trademark, Nia Wine argued that pursuant to s. 12(1)(b) of the Act, the trademark is not registrable because it is clearly descriptive of the place of origin of North 42’s goods and services because its winery is located at or near the 42nd line in the northern hemisphere and its wine originates from the same region.


Although the Board dismissed Nia Wine’s opposition on evidentiary grounds, the Board also explained that, for the purpose of s. 12(1)(b) of the Act, a trademark will be descriptive of the place of origin if it is a geographic name and the goods and services originate from the location of the geographic name.


The Board determined that the trademark in question is neither a geographic name referring to a place of origin nor is it the name of a place. Rather, the Board found that the average consumer would view the proposed trademark as a “geographical reference which alludes to a coordinate for a place or locality, but does not clearly describe a place or ‘geographic region’ in a way that is ‘easy to understand, self-evident, or plain’”.


Appeal – Refining Definitions


The Federal Court overturned the Board’s decision and refused North 42’s trademark application in its entirety pursuant to s. 38(12) of the Act.


The Court found that the Board erred by imposing an excessive burden on Nia Wine, explaining that the question of whether a place of origin includes a designated line of latitude is a legal question, not an evidentiary one. The Court explained: “[t]he onus did not lie on [Nia Wine] to convince [the Board] as to the proper interpretation of section 12(1)(b)”.


In applying the three-part test for whether a trademark is registrable pursuant to s. 12(1)(b) of the Act from the Federal Court of Appeal decision in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60, the Federal Court interpreted “place of origin” to refer to “any geographical designation”, including designated lines of latitude or longitude.


Accordingly, the Federal Court found that the trademark “NORTH 42 DEGREES” contravened s. 12(1)(b) of the Act as it clearly describes the place of origin of North 42’s goods and services.

 

Authors: Em Windrim and Caitlin Woodford

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