Product Care Association v. The Attorney General of Canada, 2015 FC 284 (J. Harrington)
March 6, 2015
Paul Smith, for the Applicant
Oliver Pulleyblank and Andrea Gatti, for the Respondent
This was a section 56 appeal arising out of a decision of the Registrar to reject an application for registration of the composite trade-mark, LightRecycle & Design, on the basis that the mark was “clearly descriptive” of the services with which it was associated, and thereby prohibited from registration by s. 37(1)(b) of the Act.
The Court canvassed the law surrounding composite marks, ultimately concurring with the Registrar that if the word elements of a composite mark are dominant, then the mark is not registerable if, when sounded, is clearly descriptive or misdescriptive of the character or quality of the services in association with which the mark is proposed to be used.
Acknowledging that the impugned mark engages the sight and sound senses, the Court pointed out that the Registrar failed to consider the different meanings of the word “light”. Unlike the ordinary consumer, the Court stated that the Registrar preferred one meaning to the others because she had the trade-mark application in hand.
The Court ultimately determined that, an ordinary consumer considering the proposed mark in its entirety (that is, the words together with the design) and as a matter of first impression, would find that the mark was “clearly descriptive” of the business at hand, and thus not registerable.
The application was dismissed, with both parties bearing their own costs.
By: Bria M. Brown, Carscallen LLP