The decisions in both the Grill Gear1 and Best Canadian Motor Inns2 cases
focus on whether composite trade-mark(s) which contain descriptive words will be
considered clearly descriptive when sounded. Historically, the majority of previous
1
General Housewares Corp. v. Fiesta Barbeques Ltd. (2002), 22 C.P.R. (4th) 254 (T.M.O.B.) reversed, 28
C.P.R. (4th) 60 (F.C.T.D.).
2
Best Western International Inc. v. Best Canadian Motor Inns Ltd. (2002), 23 C.P.R. (4th) 110 (T.M.O.B.),
affirmed, 30 C.P.R. (4th) 481 (F.C.T.D.).
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VANCOUVER
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TORONTO
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OTTAWA
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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.
MONTRÉAL
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 trademarks 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.
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Tracy M. Corneau, Shelley A. Jones
March 2005
CALGARY
Trade-marks Clearly Descriptive When Sounded
Should This Issue Resonate With Brand Owners & Practitioners?
WATERLOO REGION
Borden Ladner Gervais LLP
Lawyers • Patent & Trade-mark Agents
Borden Ladner Gervais LLP is an Ontario Limited Liability Partnership
www.blgcanada.com
Trade-marks Clearly Descriptive When Sounded, by Tracy M. Corneau, Shelley A. Jones
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.3 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.4
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:
…..an 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
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4
Supra, note 1, 28 C.P.R. (4th) 60, at pp. 70-71.
Supra, note 2, 23 C.P.R. (4th) 110, at 127.
Borden Ladner Gervais LLP
Lawyers • Patent & Trade-mark Agents
Borden Ladner Gervais LLP is an Ontario Limited Liability Partnership
www.blgcanada.com
2
Trade-marks Clearly Descriptive When Sounded, by Tracy M. Corneau, Shelley A. Jones
element, they would not have to meet the “sounded” test on the basis of
the word elements.5
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.
Tracy M. Corneau is a partner at Borden Ladner Gervais’ Ottawa office. She
is a registered Trade-mark Agent, and practises in the area of intellectual
property law. Shelley A. Jones is an associate at BLG’s Ottawa office. She is
a registered Trade-mark Agent and practises in the area of IP law.
THIS ARTICLE ORIGINALLY APPEARED IN THE DECEMBER 10, 2004 ISSUE
OF THE LAWYERS WEEKLY
5
Supra, note 2, 30 C.P.R. (4th) 481 at p. 498.
Borden Ladner Gervais LLP
Lawyers • Patent & Trade-mark Agents
Borden Ladner Gervais LLP is an Ontario Limited Liability Partnership
www.blgcanada.com
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