Amendments to the Examination Manual

Paragraph 12(1)(b): "Sounded" Test Applied to Composite Marks Which Include Words That Are the Dominant Feature of the Mark

Publication Date: 2005-02-16

Note: This practice notice is intended to provide guidance on current Trade-marks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.

Paragraph 12(1)(b) of the Trade-marks Act (hereinafter referred to as the "Act") stipulates that a trade-mark is registrable if it is not whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin.

In Best Canadian Motor Inns Ltd. v. Best Western International, Inc. (2004 FC 135, hereinafter referred to as "Best Canadian Motor Inns Ltd.") the Federal Court ruled on the interpretation of paragraph 12(1)(b) of the Act in relation to composite marks (i.e. marks that contain both word and design elements).

Specifically, in Best Canadian Motor Inns Ltd., the Federal Court concluded that the words "BEST CANADIAN MOTOR INNS" were the dominant feature of the mark shown below and, given that these words were clearly descriptive of the character or quality of the applicant's services, the mark in its entirety, when sounded, was found unregistrable pursuant to paragraph 12(1)(b) of the Act:

In light of this decision, the Trade-marks Office ("the Office") has concluded that changes are required to the current examination practice when applying the provisions of paragraph 12(1)(b) of the Act to composite marks. Commencing immediately, the Office will consider that a composite mark, when sounded, is not registrable pursuant to paragraph 12(1)(b) of the Act if it contains word elements that are:

1) clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; and also

2) the dominant feature of the mark.

Determination of whether words are the dominant feature of a composite mark
The Canadian Oxford Dictionary defines the word "dominant" as follows:
1. dominating, prevailing, most influential. 2. (of a high place) prominent, overlooking others. (...)
It defines the word "dominate" as follows:
(...) 2. tr. & intr. (of a person, sound, event, etc.) be the most influential or conspicuous factor in (...)

Le Petit Robert defines the word "dominant" as follows:
1. Qui exerce l'autorité, domine sur d'autres (...) 2. Qui est le plus important, l'emporte parmi d'autres (capital, premier, prépondérant, primordial, principal) (...)

It defines the word "dominer" as follows:
2. Exercer une influence qui l'emporte sur les autres (...) 2. Être le plus apparent, le plus fort, le plus important, parmi plusieurs éléments (l'emporter, prédominer) (...)

In determining whether a word element is the dominant feature of a mark, examiners 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.

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, color and layout of the lettering of the words, as well as the inherent distinctiveness of the design element.

The office considers that composite 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. (Canadian Jewish Review Ltd. v. Registrar of Trade Marks (1961), 37 C.P.R. 89; Ingle v. Registrar of Trade Marks (1973), 12 C.P.R. (2d) 75; John Labatt Ltd. v. Registrar of Trade-marks (1984), 79 C.P.R. (2d) 110)

Based on the definitions above, the Office takes the position that only one element in a trade-mark can be dominant. Therefore, in situations where the word element and the design element are considered to be equally influential or prominent in a trade-mark, the Office considers that neither can be the dominant feature of the mark.

When the word element of a composite mark is not the dominant feature of the mark, the Registrar considers that the mark in its totality cannot, when sounded, be clearly descriptive or deceptively misdescriptive and contrary to paragraph 12(1)(b) of the Act. Where the Registrar has doubt concerning whether the word element is the dominant feature of the mark, the Registrar cannot be satisfied that the mark, when sounded, is unregistrable under paragraph 12(1)(b) of the Act.

When it is determined that clearly descriptive words are not the dominant feature of a composite mark, the Registrar may require a disclaimer of these words pursuant to section 35 of the Act.

Sections 12(2) and 14 may be used to overcome an objection under paragraph 12(1)(b) of the Act.