From Molise, With Love: Federal Court Says Identical Geographic Descriptors Not Enough for Confusion

Overview

The good folk of Molise, Italy – a little‑known region with fewer than 300,000 inhabitants – are likely blissfully unaware that their home was the subject of a recent trademark dispute between competing Canadian importers, ultimately adjudicated by the Federal Court in Canada.

Falesca Importing Ltd. (“FI”) sought to register the trademark FALESCA MOLISANA. Its application was opposed by 996660 Ontario Ltd., operating as Molisana Imports (“MI”), on the basis that FALESCA MOLISANA was confusing with MI’s registered trademark REGINA MOLISANA, as well as two related design marks. All marks were used in association with various food products.

In the original decision, the Trademarks Opposition Board (“TMOB”) rejected MI’s confusion claim, finding the likelihood of confusion to be somewhat less than even. The TMOB held that the only common element between the parties’ marks was the word MOLISANA, which it found to be geographically descriptive, inherently weak and already in use by at least one other trader in the Canadian market in association with similar food products moving through similar channels of trade.

MI appealed to the Federal Court (the “Court”), which ultimately agreed with the TMOB and dismissed the appeal. The Court noted that the evidence was uncontroverted that MOLISANA is a demonym referring to the Molise region of Italy and reiterated the longstanding principle in Canadian trademark law that geographic descriptions are not inherently distinctive. As a result, geographic terms should be afforded limited weight when assessing the distinctiveness of the marks at issue. Without MOLISANA in the equation, the remaining elements – FALESCA and REGINA – were sufficiently different, given that there was no evident conceptual connection between them. The Court therefore found no error in the TMOB’s conclusion that consumers were unlikely to be confused.

Importantly, the Court emphasized that inherent distinctiveness should not be conflated with acquired distinctiveness. MI had argued that the TMOB failed to account for the fact that Molisana is a demonym unfamiliar to the average Canadian consumer, who might also be unaware of the Molise region entirely. The Court rejected this argument, holding that unfamiliarity with the geographic meaning pertains to acquired distinctiveness, which is grounded in consumer perception, whereas inherent distinctiveness focuses on originality, uniqueness and inventiveness in the mark itself.

The Court found no error in the TMOB’s treatment of distinctiveness. There was no evidence before the TMOB suggesting that “Molisana” meant anything other than a descriptor of people or goods from Molise, Italy. Given that the associated goods were Italian food products, it was reasonable for the TMOB to classify Molisana as a geographic descriptor with low inherent distinctiveness and to afford it limited weight. The TMOB was therefore justified in focusing on the other distinctive elements in the marks.

Takeaway

This decision reinforces a long‑established principle in Canadian trademark law: geographic terms are inherently weak and contribute little to the inherent distinctiveness of a trademark. As such, if competing marks include similar geographic terms, an adjudicator will place limited weight on this mere fact when determining confusion. As a result, even minor differences in the remaining components of the marks are often enough to avoid a finding of confusion.

For businesses, the message is clear. If you choose to include a geographic reference within a trademark, ensure that your trademark includes additional elements which are sufficiently distinctive on their own. Strong, original components will be critical in distinguishing your trademark from those of competitors and in supporting enforceability, should a dispute arise.

Please contact the authors or a member of the Intellectual Property Group at Aird & Berlis LLP if you have any questions or require assistance in regard to trademarks.