No leave to appeal in case involving scope of protection of mark dominated by descriptive word

In Osmose-Pentox Inc v Société Laurentide Inc, the Supreme Court of Canada has declined to hear an appeal in a battle over the use of the words 'conservator' and 'conservateur', with the result that the lower court decisions stand.

Although this case is not going to redefine trademark law as we know it, it should serve as a useful reminder to all that registrations for design marks featuring suggestive or descriptive words are to be given a limited scope of protection (the trial decision is available here: Osmose-Pentox Inc v Société Laurentide Inc (2013 FC 626)). The trial judge, Justice Martineau, characterised this case as a “unique opportunity” to examine the scope of protection conferred by the Trademarks Act to the owner of such a mark, and noted that:

“it 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.”

The appellant in this case, Osmose-Pentox Inc, was the owner of a registration for the design mark depicted below (where the second 'O' in the word 'conservator' had been replaced with the image of a construction helmet), which it had registered in association with protective wood coatings:

Osmose-Pentox objected to Société Laurentide Inc’s use of the terms 'wood conservator' and 'conservateur' pour bois” on labels of Laurentide's PermaTec brand wood primer sealer, claiming that any use of the word 'conservator' or the French equivalent 'conservateur' was confusing with its registered design mark, and thus infringed its right to exclusive use of the mark. The parties agreed not to file expert evidence with respect to confusion and invited the trial judge to place himself in the position of an ordinary consumer having imperfect recollection.

The defendant argued, and the trial judge agreed, that the words 'wood conservator' and 'conservateur pour bois' were not used as a trademark, but rather, that they were used to describe the defendant’s product. The trial judge thus concluded that the defendant’s use of the words 'conservator' and 'conservateur' fell within the exception under Section 20(1)(b)(ii) of the act - ie, they were a bona fide use, other than as a trademark, of an accurate description of the character or quality of the wares. The action was therefore dismissed.

Although the trial judge could have stopped his analysis there, he went on to conclude that even if the words 'wood conservator' and 'conservateur pour bois' were used as a trademark by the defendant, that they were not likely to cause confusion having regard to all the surrounding circumstances. With respect to inherent distinctiveness, the court held that the inherent distinctiveness of the plaintiff’s design mark, if any, lay in the construction helmet design element. By itself, the word 'conservator' was not distinctive. 

This decision was upheld on appeal to the Federal Court of Appeal (the appeal decision is available here: Osmose-Pentox Inc v Société Laurentide Inc (2014 FCA 146)). In particular, the Court of Appeal agreed that the exclusive right afforded to the plaintiff by virtue of its registration was in the design mark and not in the words 'conservator' and 'conservateur'. The Court of Appeal went on to agree with Justice Martineau that the defendant’s use of 'conservator' and 'conservateur' fell within the exception under Section 20(1)(b)(ii) of the act and that there was no reasonable likelihood of confusion.

Again, while there is nothing earth-shattering in this decision, it is a useful reminder of the limits of protection to be accorded to marks that are dominated by descriptive elements.

Robert A Macdonald and Nicole Vigneault, Gowlings, Ottawa