"GRILL GEAR & Design" Not Clearly Descriptive of BBQ Equipment

The Federal Court of Canada recently overturned a decision of the Registrar of Trade-marks to refuse to register the trade-mark GRILL GEAR & Design for barbeque accessories. The Registrar decided that the mark GRILL GEAR & Design was clearly descriptive of the wares.   Although the mark had a design (which included a flame in the place of the letter "A"), according to the Registrar, this did not alter the fact that, when the average consumer sounds out the mark, it is clearly descriptive.   The Registrar also concluded that the applicant's disclaimer of the words GRILL and GEAR apart from its trade-mark was consistent with the conclusion that the words were clearly descriptive. On appeal, the Federal Court found that the Registrar had erred in several respects.   First, the Registrar should not have relied upon the applicant's disclaimer of the words "GRILL" and "GEAR" to support his decision.   Second, the applicable date for considering descriptiveness is the filing date of the application, not the date of the Registrar's decision.   Third, as a design mark, it is not accurate to say that, when sounded, the mark is clearly descriptive of the wares.   At most, it is only the verbal component of the design mark that could be sounded in that way. The Grill and Gear case ([2003] FCJ 1296) is important because it affirms that a disclaimer should not prejudice or affect an applicant's rights in the disclaimed matter then existing or arising later.   It also affirms that when considering descriptiveness of a design mark, both the word component and the design features must be looked at as a whole. For a copy of the decision, visit: http://decisions.fct-cf.gc.ca/fct/2003/2003fc1021.html. Summary by: Hung Nguyen