Federal Court of Appeal gives guidance on when mark is "clearly descriptive"


In Ontario Teachers Pension Plan Board v Canada (Attorney General) (2012 FCA 60 (CanLII)), the Canadian Federal Court of Appeal has given guidance on when a trademark is “clearly descriptive” under the Trademarks Act.

The case involved the rejection, by both the registrar of trademarks and the Federal Court, of the appellant’s application to register TEACHERS as a trademark. 

The appellant, the Ontario Teachers’ Pension Plan Board, administers a pension plan for teachers and is the largest single-profession plan in Canada. In June 2002 it sought to register TEACHERS for services described as the “[a]dministration of a pension plan, management and investment of a pension fund for teachers in Ontario”.

The key issue the Federal Court of Appeal addressed was whether TEACHERS was clearly descriptive of the services at issue and thus not registrable. 

The court began its analysis (Paragraph 29) by setting out that the test:

"is one of first impression in the mind of a normal or reasonable person… One should not arrive at a determination of the issue by critically analysing the words of the trademark, but rather by attempting to ascertain the immediate impression created by the trademark in association with the wares or services with which it is used or proposed to be used. In other words, the trademark must not be considered in isolation, but rather in its full context in conjunction with the wares and services."

Importantly, the court reviewed the factors to consider in answering this question and where the line should be drawn between things that are suggestive (and so registrable) and clearly descriptive (and so not registrable).  The principle at issue is that language is common property to all. People and traders cannot be deprived of this common property through the exclusivity granted under the Trademarks Act to describe the character or quality of their goods or services. From this flows the restriction (paraphrasing the Paragraph 12(1)(b) of the act) that a mark is not registrable, whether depicted, written or sounded, if it is clearly descriptive of the character or quality of the goods or services in association with which it is used.

An important question for consideration is whether people in commerce would be deprived of using a term that they would normally or ordinarily use in carrying out their business. If so, the mark is “clearly descriptive”.  Competition should not be stifled by giving exclusivity to some traders over commonly used language, while depriving others from use of that same language.

With these factors in mind, the court determined, perhaps unexpectedly, that TEACHERS is clearly descriptive of the “[a]dministration of a pension plan, management and investment of a pension fund for teachers in Ontario”. It considered that:

  • use of the name did not involve any incongruence;
  • a reasonable person would understand that the appellant administers a plan for teachers; and
  • a reasonable person would clearly conclude that the services were for the exclusive benefit of teachers.

As such, the court found that “a reasonable person requires neither effort nor imagination to conclude that the appellant’s trademark clearly describes the character of the services that it offers”. On this basis, the court determined that the proposed mark was clearly descriptive of an “inherent or intrinsic quality” of the appellant’s wares and, therefore, was not registrable. The appeal was dismissed.

David Wotherspoon, Fasken Martineau DuMoulin LLP, Vancouver

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