Adding a Geographic Name to your Trademark

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From a business and marketing perspective, affixing a geographical name to a business name can have great benefits. Customers associate your brand with a particular area, which can build brand value. For example, to name your brand as Pure Assam Tea is a coup for your brand as Assam is associated with having some of the best tea in the world.

If you include a geographical term within your business name can you trademark and protect the business name? Can your trademark be challenged?

The Three Categories

The usage of geographical terms in a business name can fall under three broad categories.

Descriptive

Under this category, the business name describes the location or source of the product. For example, use of "Teas of Assam" would be very difficult to trademark because it describes the source of the product.

Arbitrary/Suggestive

Arbitrary or suggestive refers to the usage of the name heavily in its business name and could be used to create a feeling of an area. For example, Arizona Iced Tea. It could also be used arbitrarily, such as The New Yorker.

Such names often have a secondary meaning and can often be registered as trademarks.

Misdirective

Under this category, the business name that has the geographical term is misleading. For example, a business named "European Clothing" who sells clothing made entirely in North America could be leading consumers to believe that the clothing they are purchasing was made in Europe.

Court Assessment

In MC Imports Inc v AFOD Ltd, 2016, the Court of Appeal set down an assessment process in defining whether a business can use a geographic term in its business name or not.

• Business trademark is the name of a geographic place:The Court of Appeal stated if there is more than one meaning attached to the geographic name, the perception of the customers determines the trademark. This seems to indicate that there is a requirement that a trademark with a geographic term within it have a secondary meaning.
• Goods or services originate from that geographic area:If the goods or services do not originate from the geographical area, then the business name may considered misdirective. If the trademark is deceptively misdescriptive, it cannot be trademarked.
• Assessment of the business owner’s claim of use:If the descriptive trademark name has become distinctive to the consumers, it can become a trademark under Section 12(2) of the Trade-mark Act:"A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration."

When choosing a business name, a consultation with a trademark agent may be beneficial. A trademark agent will be able to answer questions as to whether or not your potential business name can be trademarked.