Court considers assessment of descriptiveness of a mark when sounded

In Worldwide Diamond Trademarks Limited v Canadian Jewellers Association (T-890-09, March 17 2010), the Federal Court of Canada has addressed a number of interesting issues in terms of assessing the descriptiveness of a trademark.
Worldwide Diamond Trademarks Limited applied to register three figurative marks containing the words 'The Canadian Diamond Report' in capital letters and the words 'The mark of a diamond that is mined, cut and polished in Canada' in normal script. All three applications were based on use in Canada in association with diamonds, diamond certificates and diamond appraisals, diamond cloths, magnifying loops, point of purchase countertop displays, posters, pens and diamond appraisal services. Various elements of the marks were disclaimed.

Under the Canadian Trademarks Act, a mark may not be registered if it is, “whether depicted, written or sounded”, clearly descriptive of the character or quality of the goods or services for which it is used. The Trademarks Opposition Board determined that all three marks were clearly descriptive of the character or quality of the goods and services for which they were used and refused the applications.

On appeal, Worldwide Diamond argued that:

  • the marks contain words which form parts of previously registered trademarks;
  • words such as 'report' and 'mark' have many different meanings; and
  • the flag-like design element is dominant and renders the marks non-descriptive. 
The Federal Court rejected these arguments and dismissed the appeal.

In support of its first argument, Worldwide Diamond noted that it had obtained registration of the mark THE MARK OF A DIAMOND THAT IS MINED, CUT AND POLISHED IN CANADA, albeit with a disclaimer of the words 'diamond', 'cut', 'polished' and 'Canada', and a disclaimer of the phrase 'a diamond that is mined, cut and polished in Canada'. The court agreed that the Opposition Board may take into account prior registrations when assessing descriptiveness, but that there was no need for the board to perpetuate any errors made in the past. The court went on to say that “the fact that the registrar has allowed other registrations, which may not pass muster before me, does not entitle the applicant to a new registration. The law is the law regardless of inadvertent breaches in the past”. The court determined that the previously registered mark was clearly descriptive and did not assist the applicant.

With respect to World Diamond’s second argument, the court noted that “abstract dictionary references, divorced from the context where they are situated, cannot be used to transform a trademark that, on first impression, is clearly descriptive, into one that is not”. The court concluded that the words 'mark' and 'report' could not reasonably bear any other definition in the context of the marks apart from a clear description of the goods and services of World Diamond.

Finally, with respect to the flag-like design element, the court noted that it was registrable by itself and, in fact, had already been registered. However, in the context of the proposed marks, the design element could not be said to be dominant such that it would prevent that mark from being clearly descriptive when sounded. In reaching this conclusion, the court relied on a previous decision of the Federal Court in Best Canadian Motor Inns v Best Western International Inc, which dealt with the mark BEST CANADIAN MOTOR INNS in association with a maple leaf design. The court, in that instance, had held that the addition of the design element was insufficient to render the mark registrable, since it would be sounded by reference to the dominant words.

In the present case, the court concluded that it was open to Parliament to provide an exception in relation to descriptive marks which contain a design element, but that Parliament chose not to do so. Instead, Parliament provided that a clearly descriptive mark could be registered only upon proof of acquired distinctiveness and, in this instance, the evidence was insufficient to show acquired distinctiveness as of the material date. 

The question that remains is this - when will a design element be viewed as dominant such that it negates the descriptiveness of a mark when sounded? The Canadian Trademarks Office addressed that issue in a practice notice issued in 2005. The practice notice defined the following approach:

"1. [E]xaminers will 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. In doing so, examiners will look at the mark in its totality, and compare the visual impression created by the word element of the mark to the visual impression created by the design element of the mark. Where the design element of the mark does not stimulate visual interest, the word element will be deemed dominant.
2. Factors that may be considered by examiners in assessing the visual impression created by the elements of a mark include the size of the words and the size of the design, the font, style, colour and layout of the lettering of the words, as well as the inherent distinctiveness of the design element.
3. [C]omposite marks which include design elements added to clearly descriptive words, are not registrable if the design elements are mere embellishments of the letters comprising the words and cannot be dissociated from the words themselves.”
4. [O]nly one element in a trademark can be dominant. Therefore, in situations where the word element and the design element are considered to be equally influential or prominent in a trademark, the office considers that neither can be the dominant feature of the mark."

The practice notice is only relevant at examination. It does not bind the Opposition Board or the Federal Court. Therefore, it would be useful to have guidelines from the court as to when a design element will be sufficiently dominant so as to render an otherwise clearly descriptive mark registrable. In this case, the court appeared to rely upon the relative size of the design in comparison to the words, which begs the question: would a larger size have given a different result?

Robert A MacDonald, Gowling Lafleur Henderson LLP, Ottawa

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