Federal Court considers scope of protection accorded to design marks
In Osmose-Pentox Inc v Société Laurentide Inc, the Federal Court has considered the scope of protection accorded to the owner of a registered design trademark.
The plaintiff manufactures and sells wood coatings and wood preservatives, primarily under the PENTOX mark. The plaintiff owns the registration for the design mark CONSERVATOR for use in association with “surface coatings, namely coatings for the protection of wood”. When viewed and read as a whole, the mark forms the word 'conservator', with the last 'o' replaced by a construction hat design:
At issue was the defendant’s use of the terms 'conservateur pour bois' and 'wood conservator' on the labels of its PermaTec brand of exterior wood primers and sealers.
The plaintiff alleged that the defendant’s use of 'conservateur pour bois' and 'wood conservator' on the labels infringed their exclusive right to the use of the CONSERVATOR trademark. Going even further, the plaintiff alleged that the scope of protection conferred by virtue of the design registration extended to prohibit third parties from using the words 'conservator' and 'conservateur' in association with the manufacturing, promotion, sales and distribution of any coatings for the protection of wood.
The defendant submitted that its use of 'conservateur pour bois' and 'wood conservator' was descriptive and did not amount to use as trademark. As a result, the use fell under the exception found under Paragraph 20(1)(b) of the Trademarks Act for the “bona fide use, other than as a trademark, of any accurate description of the character or quality of the wares”. In support of this position, the defendant pointed to the layout of the labels where 'conservateur pour bois' and 'wood conservator' appeared in small font, in both English and French, underneath the prominent PERMATEC trademark.
The court found that no infringement took place, agreed that the use of 'conservateur pour bois' and 'wood conservator' was descriptive, and that the use by the defendant did not result in the depreciation of the plaintiff’s goodwill. Even if the use of the terms by the defendant had not been bona fide descriptive use, having regard to all the surrounding circumstances, including the factors mentioned in Section 6(5) of the act, the court found that there was very little risk that an ordinary consumer with an imperfect recollection would be confused between the CONSERVATOR mark and the use of the terms 'conservateur pour bois' and 'wood conservator' on the PermaTec labels.
Of note is the court’s consideration of how far the scope of protection accorded to a design mark reaches. It was by virtue of the construction hat design that the plaintiff was able to obtain the registration for what would otherwise likely be an unregistrable descriptive mark in the first instance. In response to the plaintiff’s assertion that the rights accrued from the registration extended to the exclusive right to the use of the words 'conservator' and 'conservateur' in association with “coatings for the protection of wood”, the court found that:
"[i]t would be incompatible with the scope of protection conferred by law to a design mark to allow its registered owner to piggy-back on its exclusive right to use the design and obtain a monopoly over the use of any suggested word, especially if it is an existing word in the vocabulary."
By virtue of the design, the plaintiff was able to obtain registration for an otherwise descriptive term. Importantly, however, the rights conferred by the design registration do not extend to the exclusive right to the use of the words 'conservator' and 'conservateur' on their own. The court found in favour of the defendants and dismissed the action.
Julia Kelen, Gowling Lafleur Henderson LLP, Toronto
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