Federal Court Of Appeal Clarifies Descriptiveness Test For Composite Marks

On May 5, 2026, the Federal Court of Appeal (FCA) issued its decision in Therme Development (CY) Ltd. v. Nordik Spa Village Chelsea Inc., 2026 FCA 85, dismissing Therme Development (CY) Ltd.’s (Therme’s) appeal of a Federal Court (FC) decision to strike certain services listed in association with Therme’s trademark registrations for THEREME, THERME GROUP, and certain THERME composite marks (i.e., with both a word and a design element) (the Composite Marks).

As previously reported by the E-TIPS® Newsletter here, the trademarks at issue were intended to be used in association with goods and services offered at a health spa at the former location of Ontario Place. Auberge & Spa Le Nordik Inc. (now Nordik Spa Village Chelsea Inc.) and Nordik Immobiliers Winnipeg Inc. (collectively, Nordik), sought to strike some of the services associated with the trademarks and, following a review of the matter, the FC found in Nordik’s favor. In its appeal of the FC’s decision, Therme challenged the following conclusions made by the FC:

1. the Composite Marks are clearly descriptive of the character of some of their associated services when sounded in the French language;
2. the THERME mark and Composite Marks are deceptively misdescriptive of the character of some of their associated services when sounded in the French language; and
3. the THERME and THERME GROUP marks are confusing with Nordik’s THERMËA  registered trademarks.

On the first issue, the FCA agreed with the FC’s ultimate finding that the word component of the Composite Marks was dominant and the marks, as sounded, were clearly descriptive. However, it held that the FC erred by considering that the design elements of the Composite Marks could not be sounded. The FCA explained that whether a mark, when sounded, is clearly descriptive is a two-stage analysis: first, whether the word element is dominant; and second, whether that dominant element is clearly descriptive when sounded.

On the second issue, Therme argued that the FC erred by finding several marks deceptively misdescriptive for certain services despite not being clearly descriptive of those same services. The FCA rejected this argument, explaining that while a mark must be found to be descriptive before it can be misdescriptive, the FC’s finding that the marks were not clearly descriptive of certain services does not necessarily mean that they are not misdescriptive of those services. The FCA found no palpable or overriding error in the FC’s analysis of this issue.

On issue three, the FCA found that the FC did not err in finding that the THERME marks are confusing with Nordik’s THERMËA marks due to similar pronunciation in English.

Ultimately, the FCA dismissed the appeal.

Summary By: Amy Ariganello