In Osmose-Pentox Inc. v. Société Laurentide
Inc., the Federal Court considered the scope of protection
accorded to an owner of a registered design trade-mark.
The plaintiff manufactures and sells wood coatings and wood
preservatives, primarily under the PENTOX brand. The plaintiff
owns the registration for the mark CONSERVATOR DESIGN for use in
association with "surface coatings, namely coatings for the
protection of wood." When viewed and read as a whole, the
mark forms the word "conservator", with the last
"o" replaced by a construction hat design:
At issue was the defendant's use of the terms
"CONSERVATEUR POUR BOIS" and "WOOD CONSERVATOR"
on the labels of their PermaTec brand of exterior wood primers and
The plaintiff alleged that the defendant's use of
"CONSERVATEUR POUR BOIS" and "WOOD
CONSERVATOR" on the labels infringed their exclusive right to
the use of the CONSERVATOR DESIGN trade-mark. Going even
further, the plaintiff alleged that the scope of protection
conferred by virtue of the design registration extended to prohibit
third parties from using the words "conservator" and
"conservateur" in association with the manufacturing,
promotion, sales and distribution of any coatings for the
protection of wood.
The defendant submitted that its use of "CONSERVATEUR POUR
BOIS" and "WOOD CONSERVATOR" was descriptive and did
not amount to use as trade-mark. As a result, the use fell
under the exception found under paragraph 20(1)(b) of the
Trade-marks Act for the "bona fide use, other than as
a trade-mark, of any accurate description of the character or
quality of the wares". In support of this position, the
defendant pointed to the layout of the labels where
"CONSERVATEUR POUR BOIS" and "WOOD CONSERVATOR"
appeared in small font, in both English and French, underneath the
prominent PermaTec trade-mark.
The Court found that no infringement took place, agreed that the
use of "CONSERVATEUR POUR BOIS" and "WOOD
CONSERVATOR" was descriptive, and that the use by the
defendant did not result in the depreciation of the plaintiff's
goodwill. Even if the use of the terms by the defendant had
not been bona fide descriptive use, having regard to all the
surrounding circumstances including the factors mentioned in
section 6(5) of the Act, the Court found that there was very little
risk that an ordinary consumer with an imperfect recollection would
be confused between the CONSERVATOR DESIGN mark and the use of the
terms "CONSERVATEUR POUR BOIS" and "WOOD
CONSERVATOR" on the PermaTec labels.
Of note is the Court's consideration of how far the scope of
protection accorded to a design mark reaches. It was by virtue
of the construction hat design that the plaintiff was able to
obtain the registration for what would otherwise likely be an
unregistrable descriptive mark in the first instance. In
response to the plaintiff's assertion that the rights accrued
from the registration extended to the exclusive right to the use of
the words "conservator" and "conservateur" in
association with "coatings for the protection of wood",
the Court found that:
[i]t would be incompatible with the scope of protection
conferred by law to a design mark to allow its registered owner to
piggy-back on its exclusive right to use the design and obtain a
monopoly over the use of any suggested word, especially if it is an
existing word in the vocabulary. [emphasis added]
By virtue of the design the plaintiff was able to obtain
registration for an otherwise descriptive term. Importantly,
however, the rights conferred by the design registration do not
extend to the exclusive right to the use of the words
"conservator" and "conservateur" on their
own. The Court found in favour of the defendants and dismissed
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