A sound examination should not include design elements


In Best Canadian Motor Inns Ltd v Best Western International Inc, the Federal Court of Canada has refused registration of the trademark BEST CANADIAN MOTOR INNS and design.

Best Canadian Motor Inns Ltd applied to register BEST CANADIAN MOTOR INNS and design for use in connection with hotel, restaurant and accommodation services. The mark was a design mark that included the words 'Best Canadian Motor Inns' rendered in a particular script, in combination with a maple leaf motif, framed by two parallel lines.

The Canadian Trademarks Opposition Board rejected the application. It held that the proposed registration failed to comply with Section 12(1)(b) of the Canadian Trademarks Act, which provides that a trademark is not registrable "whether depicted, written or sounded", if it is clearly descriptive or deceptively misdescriptive in English or French of the character or quality of the relevant goods or services.

On appeal, the Federal Court upheld the Opposition Board's decision. It considered a previous decision concerning the registrability of the mark GRILL GEAR and flame design, in which the Federal Court held that, when considering whether the mark was descriptive in depiction, appearance or sound, the impact of both the flame motif and the descriptive verbal components had to be considered. It concluded that the GRILL GEAR and flame design mark was registrable as it was not clearly descriptive.

In the case at hand, the Federal Court distanced itself from the decision in GRILL GEAR and held that the words "or sounded" in Section 12(1)(b) of the Trademarks Act should be given their ordinary and plain meaning. This requires that design elements that are combined with textual components should be disregarded in deciding whether a trademark is descriptive as sounded. Accordingly, the court concluded that the mark BEST CANADIAN MOTOR INNS and design was not registrable. While recognizing the potential impact of its conflicting decision, the court stated that any concerns should be addressed by parliament.

Mark K Evans, Smart & Biggar/Fetherstonhaugh & Co, Toronto

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