Canada: Trade-marks Clearly Descriptive When Sounded - Should This Issue Resonate With Brand Owners & Practitioners?

Last Updated: March 9 2005
Article by Theresa M. (Tracy) Corneau and Shelley A. Jones

Most Read Contributor in Canada, September 2016

Originally published December 10, 2004 issue of The Lawyers Weekly

Recent Canadian trade-mark case law presents new challenges to both owners and practitioners. In an effort to emphasize certain characteristics or qualities of their products or services, brand owners often incorporate descriptive words in their trade-marks. As a result, obtaining a registration for such trade-marks is often difficult since the Canadian Trade-marks Office will object to the registration of a trade-mark which comprises words or designs that are descriptive. Specifically, section 12(1)(b) of the Trade-Marks Act (the "Act") provides that a trade-mark is registrable if it is not, "whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive" of the wares or services with which it is associated.

To overcome the descriptiveness issue, businesses sometimes utilize minimal design features and disclaim the exclusive right to the descriptive portion of the composite trade-mark or logo. Although Section 35 of the Act permits use of a disclaimer that extends to the unregistrable portion of the mark, a recent Federal Court decision suggests that the use of disclaimers may no longer be as effective. This apparent shift in determining the registrability of composite marks could, therefore, impact brand owners applying for new trade-marks and those involved in opposition proceedings.

The decisions in both the Grill Gear and Best Canadian Motor Inns cases focus on whether composite trade-mark(s) which contain descriptive words will be considered clearly descriptive when sounded. Historically, the majority of previous case law did not specifically examine this concept, although there have been cases where the issue did arise.

The Grill Gear case involved the mark GRILL GEAR & Design, to be used in association with barbeque accessories. The Trade Marks Opposition Board ("T.M.O.B.") decided that the inclusion of the image of a flame did not detract from the view that the words "Grill Gear", when sounded, were clearly descriptive of the wares at issue. According to the Registrar, the average consumer of the applicant’s wares would not "sound the applicant’s marks by reference to all the elements forming the mark".

On appeal, the Federal Court disagreed with the Registrar’s conclusions and determined that the mark, as comprising both a design element and its "verbal" component, had to be considered in its totality. As a result, the Court found that such trade-marks may still be capable of being registered.

In Best Canadian Motor Inns, the Trade-marks Opposition Board, (T.M.O.B.), refused to register a mark consisting of both words and design elements on the basis that the mark was "clearly descriptive when sounded". Specifically, the Registrar found that:

…..the applied for mark would be sounded by reference to the dominant words forming the mark. I would therefore expect the average person to sound the applicant’s mark as "BEST CANADIAN MOTOR INNS". I therefore find that the mark is clearly descriptive, or deceptively misdescriptive, when sounded, of the applicant’s services in Canada and therefore offends s.12(1)(b) of the Act.

On appeal, the Federal Court reached a conclusion different than that which would be predicted on the basis of the Grill Gear case. In doing so, the Court relied on a strict interpretation of s.12(1)(b). Rather than exercising the option provided by section 35 to allow a disclaimer of the unregistrable portion(s) of the trade-mark, Gibson J. was of the view that the Federal Court’s decision in Grill Gear ignored general principles of statutory interpretation when considering the provisions of paragraph 12(1)(b) of the Act and found that:

… option was open to Parliament at the time the Act was enacted and that has remained open since that time. That option would have been, and remains, to add an additional exception to the application of s.12(1)(b) for design marks that includes words as a dominant feature so that, as with at least some design marks that have no dominant word element, they would not have to meet the "sounded" test on the basis of the word elements.

Consequently, it is important that businesses and practitioners contemplate whether the adoption of a trade-mark containing descriptive words or designs will raise objections by Trade-marks Office Examiners, and possible rejections by the Opposition Board. These issues may create concerns for the owners of such marks and advantages for the challengers. In view of these challenges, brand owners should also be encouraged to review their trade-mark portfolios for potential risks.

As a result of the comments of the Registrar and/or Courts in the Grill Gear and Best Canadian decisions, it would seem that if a logo contains more dominant design features, the mark in its entirety is less likely to be considered contrary to Section 12(1)(b). As brand owners, it is important to realize that consumers recognize brands by means other than words. Support for this proposition was considered by the Court in Grill Gear. Therefore, practitioners and businesses should consider the possible benefits of adopting distinctive and prominent design features rather than the use of descriptive words.

Although there is no guarantee that these steps will prove successful in obtaining and/or maintaining registrations for such composite trade-marks, owners should have some basis for protecting their brands. If the choice, however, is made to adopt weaker, descriptive trade-marks with less dominant design features, some level of risk must be expected and assumed. It will be important to monitor the case law and any changes in Trade-marks Office practice.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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