A word that clearly describes a particular product or service
cannot function as a trademark for that product or service. The
Trademarks Act phrases this idea in a more formal
way: section 12(1)(b) says that a trade-mark is
registrable if it is not ... "whether depicted, written
or sounded, either clearly descriptive or deceptively
misdescriptive in the English or French
language of the character or quality of the
wares or services in association with which it is used or proposed
to be used or of the conditions of or the persons employed in their
production or of their place of origin". (Emphasis added)
The case of Primalda Industries
Corp v Morinda, Inc., 2004 CanLII 71759 (CA
TMOB), reviewed an application for the trade-mark TAHITIAN
NONI Design, for the following wares: "skin care preparations;
namely, cleansers, lotions, gels, moisturizing creams" and
similar products. The term TAHITIAN NONI refers to the morinda
citrifolia tree, which is commonly known as 'NONI' in
the Polynesian language. The application was opposed based on
a challenge that the mark offended section 12(1)(b) since it was
"clearly descriptive or deceptively misdescriptive" of
the products, by virtue of the fact that the name is a clear
description of ingredients in the skin care products, which
are derived from the fruit of the 'Tahitian NONI'
This might be like trying to register the word CANADIAN MAPLE in
association with skin care products derived from, say, the syrup
from the maple tree.
However, after reviewing the Act, the court rejected this ground
of opposition. Why?
"It is self-evident from the legislation," the Court
said, "that words that might be descriptive in a language
other than French or English are not subject to paragraph 12(1)(b).
As the opponent alleges in its statement of opposition that
'NONI' is a Polynesian word and there is no evidence that
it is an English or French word, I conclude that TAHITIAN NONI
Design cannot be unregistrable pursuant to paragraph
In short, a clearly descriptive word
can be registrable in Canada as long as
it is not descriptive in the English of French language.
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