MC Imports Inc. appealed a decision of the Federal Court that invalidated its trade-mark for LINGAYEN in association with Filipino food products such as fish sauce, preserves, salted fish, and other related goods, as well as supplier and distributor services. The word “Lingayen” is the name of a municipality in the Philippines. The Federal Court, after a summary trial, found the trade-mark was invalid because it was clearly descriptive of the place of origin of the wares, contrary to s. 12(1)(b) of the Trade-marks Act.
Before the Court of Appeal, the main issue was to resolve whether the impression of an ordinary consumer was relevant to the prohibition to registration in section 12(1)(b) dealing with marks that are clearly descriptive of thier place of origin. The appellant relied on Conzorsio Del Prosciutto Di Parma to submit that that the analytical approach must consider whether the ordinary consumer perceived the trade-mark to relate to the wares’ place of origin. In contrast, the respondent relied on Leyda, which held that the knowledge of the ordinary Canadian consumer was irrelevant. The Court of Appeal held that the correct legal approach amounts to a contest between Parma and Leyda.
The FCA, following Leyda, held that whether a mark is clearly descriptive of the place of origin of the wares is not dependent on the knowledge, or lack thereof, of the average Canadian consumer. The Court of Appeal stated that the Federal Court’s decision in “with its general public approach is not the proper jurisprudential authority to rely upon when facing a clearly descriptive case.” The proper test under s. 12(1)(b) of the Trade-marks Act is:
 How, then, does one determine whether a geographic name is unregistrable as a trade-mark because it is clearly descriptive of place of origin? First, by determining that the trade-mark is a geographical name; second, by determining the place of origin of the wares or services; and third by assessing the trade-mark’s owner assertions of prior use, if any.
 In sum, if a trade-mark is a geographic name that refers to the actual place of origin of the goods or services with which the trade-mark is associated, it is clearly descriptive of place of origin within the meaning of paragraph 12(1)(b) of the Act, and is therefore not registrable.
In coming to this conclusion, the FCA rejected academic criticisms of Leyda, holding that this commentary failed to distinguish between cases dealing with clearly descriptive or deceptively misdescriptive trade-marks
If the trade-mark is the actual place of origin of the wares, the trade-mark may nonetheless be registrable under section 12(2) if it had become distinctive as of the date of publication due to its prior use. In such circumstances, the perception of the ordinary consumer becomes highly relevant and the trade-mark applicant must provide evidence that the mark “has acquired a dominant secondary or distinctive meaning in relation to the wares or services” in order to benefit form the exception provided by section 12(2). Mere evidence of prior use, however, is not sufficient;
 The appellant’s evidence of prior use is not sufficient to meet the burden of demonstrating that it had acquired distinctiveness at the time of registration. The appellant provided evidence that its product had been continuously sold since 1975 in association with the LINGAYEN trademark, and it provided an expert affidavit contending that because of this the trade-mark had “likely” acquired distinctiveness in the minds of consumers.
 Effectively, the appellant has shown nothing more than the fact of its prior use and the speculation of one expert as to consumer perceptions. This is insufficient to meet its burden of proving that the trade-mark acquired distinctiveness in the minds of consumers.
Since MC Imports was unable to demonstrate LINGAYEN had acquired distinctiveness by the date of registration, it could not rely on the saving provision of section 12(2) and accordingly the Court of Appeal dismissed the appeal.
A copy of the Court of Appeal’s decision is available here.