Federal Court of Canada Affirms "Sounded" Test for Design Marks

In a previous issue of E-TIPSâ„¢ (Vol 2 No 9 October 9, 2003), the Grill Gear decision was noted in which the Federal Court of Canada, Trial Division, found that when considering descriptiveness of a design mark, both the word component and the design features must be looked at as a whole. In that case the Court held that, as a design mark, it was not accurate to say that, when "sounded", the mark was clearly descriptive of the wares. But in a more recent decision, Best Canadian Motor Inns Ltd v Best Western International, Inc, a different judge of the Trial Division declined to follow the Grill Gear decision in part because, according to Justice Gibson, the prior case had ignored "generally applicable principles of statutory interpretation". In Best Canadian, the applicant had applied to register BEST CANADIAN MOTOR INNS & Design for hotel services. The design component included a maple leaf, which was disclaimed, and two horizontal lines. The application was opposed by Best Western International, Inc. In refusing to register the mark, the Trade-mark Opposition Board held that the design features were insufficient to render the mark registrable. The Board found that an average person would sound the applicant's mark as "BEST CANADIAN MOTOR INNS" and therefore the mark, when sounded, was clearly descriptive of the applicant's services. The applicant's appeal to the Federal Court was dismissed, Justice Gibson holding that design marks that include words as a dominant feature must meet the "sounded" test in order to be registrable. Justice Gibson went on to state that any exception to this rule would have to be resolved by Parliament, not the courts. For a copy of the decision, visit: http://decisions.fct-cf.gc.ca/fct/2004/2004fc135.shtml. Summary by: Hung Nguyen