Canadian Intellectual Property Law Bulletin
Beware of Design Trade-Marks
Incorporating Descriptive Words
March 2005
Previous case law, notably Fiesta Barbeques
Ltd. v. General Housewares Corp.¹, held that,
in composite marks, …
it is not accurate to say that,
when sounded, [the mark] is
either clearly descriptive or
deceptively misdescriptive of the
character or quality of the wares
or services … At most, it is only
the verbal component of the
Subject Trade-Mark that could be
sounded in this way.
A composite trademark (a mark which
incorporates word and design elements)
having as its dominant feature clearly
descriptive, or deceptively misdescriptive
words, is no longer registrable. Likewise,
currently registered composite trademarks
which include as its dominant feature clearly
descriptive or deceptively misdescriptive words
are now susceptible to invalidity proceedings.
The inconsistency in the law regarding the
application of paragraph 12(1)(b) of the Trademarks Act to trademarks incorporating both
word and design elements (composite marks)
has been settled. As a result of a recent court
decision from the Federal Court of Canada, a
new practice notice from the Canadian
Intellectual Property Office has been released,
whereby composite marks whose dominant
features are clearly descriptive or deceptively
misdescriptive are no longer registrable
unless as of the filing date of the application, the
composite mark was distinctive.
Paragraph 12(1)(b) of the Trade-marks Act
stipulates that a trademark 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…”
As a result, any composite mark which
contained descriptive words and design
elements was examined as a whole and,
unless the design elements were negligible,
the mark could be registered.
This reasoning was soundly rejected by the
recent Federal Court of Canada decision of
Best Canadian Motor Inns Ltd. v. Best Western
International Inc². Scott Miller, a senior litigator
with Marusyk Miller and Swain LLP,
representing Best Western, argued that the
previous case law effectively imported an
exception into paragraph 12(1)(b) for
composite marks.
Justice Gibson agreed and held that the court
in Fiesta “ignored generally applicable
principles of statutory interpretation when
considering the words of s. 12(1)(b) of the Act.”
Justice Gibson further held that it was open to
Parliament to add an additional exception for
design marks that include words as their
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dominant feature. The fact that they had not
done so meant that no such exception was
contemplated.
Following the Best Western decision, the
Canadian Trade-marks Office published on
February 16, 2005, a practice notice specifying
a new examination procedure when applying
paragraph 12(1)(b) of the Trade-marks Act to
composite marks. The Practice Notice is
intended to provide guidance for the
registration of composite marks that include
otherwise
descriptive,
or
deceptively
misdescriptive, wording.
The Practice Notice states that, when applying
the provisions of paragraph 12(1)(b) of the
Trade-marks Act to composite marks, the
Trade-marks Office will consider that a
composite mark, when sounded, is not
registerable if it contains clearly descriptive or
deceptively misdescriptive words that are the
dominant feature of the mark.
To determine whether a word element is the
dominant feature of a mark, the examination
practice will be to consider whether a
prospective consumer would, as a matter of
first impression, perceive the word element as
being the most influential or prominent feature
of the mark. Factors that may be considered by
Examiners in determining whether the word
element comprises the dominant feature of the
mark include:
1. Size of the words and the design
2. Font, style, colour and layout of
the lettering of the words
3. Inherent distinctiveness of the
design element
In light of this change in practice, practitioners
should review their clients’ trade-mark
portfolios for recent applications of composite
marks that could likely be rejected when
examined by the Trade-marks Office and for
registered composite trademarks which include
as its dominant feature clearly descriptive or
deceptively misdescriptive words which are
now susceptible to invalidity proceedings.
The Practice Notice states that the new
examination guidelines, when applying the
provisions of paragraph 12(1)(b) of the Act to
composite
marks,
are
to
commence
immediately.
Therefore,
backlogged
applications for composite marks awaiting
examination will fall under the new guidelines.
Those applications filed without consideration
for the new examination procedure will likely be
rejected under the new regime. Applicants in
this situation would be advised to either file
new applications with a more prominent design
feature or start crafting arguments to overcome
objections of descriptiveness. For example,
that the word elements as a whole are not
clearly descriptive or that the trademark had
acquired distinctiveness as of the filing date of
the application.
However, applicants intending to rely on
paragraph 12(2), which permits applicants to
overcome descriptiveness objections based on
the acquired distinctiveness of their trademark,
should keep in mind that there is a substantial
onus to prove that the mark applied for has
acquired
distinctiveness
in
Canada.
Furthermore, if the applicant filed a trademark
for a proposed use and was denied registration
by the terms of paragraph 12(1)(b), he could
not rely on paragraph 12(2), since the mark
could had not have acquired distinctiveness as
of the date of filing, since the mark was not in
use.
This change in practice might also create new
opportunities to expunge existing registrations.
Composite marks with dominant wording may
be susceptible to expungement on the grounds
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that they were not registrable at the date of
registration, and that they were not distinctive
at the time expungement proceedings were
launched, pursuant to paragraphs 18(1)(a) and
(b) of the Act.
Under an expungement proceeding pursuant to
paragraph 18(1)(a), a composite trademark
having as its dominant feature clearly
descriptive or deceptively misdescriptive words
would be invalid since it was not registrable at
the date of registration. Since the critical date
is the date of registration, evidence that the
mark
has
subsequently
acquired
distinctiveness sufficient to make it registrable
under s. 12(2) is irrelevant. The Trade-mark
Act is clear in precluding registrations of any
type of trademark which, when sounded, is
clearly descriptive. Therefore, hundreds, if not
thousands, of registered composite marks with
dominant clearly descriptive wording, which
should not have been registered, could be
invalidated.
composite
words.
marks
with
clearly
descriptive
The Best Western case has changed the rules
for composite marks. It is clear that the days of
obtaining trade-mark registrations by simply
adding a design element to descriptive words
are past. With this practice notice, it has
become significantly more difficult to secure
registrations for descriptive composite marks or
to protect them from expungement even after
registration. When considering the adoption of
a new trademark, applicants and practitioners
must give serious thought to whether the
proposed mark contains dominant design
elements to overcome descriptive words
included in the mark.
For further information, please contact
Scott Miller
MBM Intellectual Property Law
613.567.0762
A trademark could also be invalidated if it lacks
distinctiveness.
Pursuant
to
paragraph
18(1)(b), a mark may be invalidated if, at the
date of the commencement of the proceedings,
the mark was not distinctive.
Thus, a
trademark that was not considered descriptive
when it was registered may also be brought
within the ambit of the new guidelines on the
basis that a descriptive mark is more likely to
be non-distinctive.
It remains to be seen if Parliament will take up
the challenge from Justice Gibson in Best
Western and introduce legislation to provide an
exception to the application of paragraph
12(1)(b) for composite marks that include
clearly descriptive words.
The Canadian
Intellectual Property Office is presently
considering the possibility of amending the Act
to clarify the intent of this provision with respect
to the “when sounded” test as applied to
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