A recent decision of the Trade-marks Opposition Board deals with
the registrability of a domain name.
The applicant applied to register the trade mark
CROSSBORDERPHARMACY.COM in association with marketing services,
ordering services and order fulfillment services relating to the
sale of pharmaceuticals to consumers.
The opponent opposed the application on the grounds that the
applied for mark was not registrable because it was clearly
descriptive and not distinctive of the applicant's
While a domain name that is registrable as a trade mark and used
as a trade mark may be protected, the opponent raised significant
issues concerning registrability.
A trade mark is not registrable if, when depicted, written or
sounded, it is either clearly descriptive or deceptively
misdescriptive in the English or French language of the character
or quality of the services in association with which it is
The Hearing Officer observed that this issue must be considered
from the point of view of the average user of the services. In
addition, the mark must not be dissected into component elements
and carefully analyzed, but must be considered in its entirety as a
matter of immediate impression. In applying this statutory
provision, it is well established that character means a feature,
trait or characteristic of the services and "clearly"
means easy to understand, self-evident or plain.
The fact that a particular combination of words does not appear
in any dictionary does not prevent a trade mark from being found to
be clearly descriptive. If each portion of a mark has a well known
meaning in English or French, the combination may be contrary to
the provisions of the Trade-marks Act. Even if a mark
consists of a new combination, the dictionary meanings of the
components should be considered.
The Hearing Officer concluded that it was self-evident that the
mark as a whole indicated that the applicant's services
related to a pharmacy providing international sales via the
Internet. As a result, it was concluded that the mark was clearly
descriptive of the services and the application was refused.
If the applicant's trade mark has been so used as to
become distinctive, an application may be filed in the future for
the trade mark notwithstanding that the mark is clearly
descriptive. However, to proceed in this fashion, extensive
evidence to support the acquisition of distinctiveness must be
filed. In addition, the strength of this evidence can be challenged
in an opposition.
The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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