Court Upholds Decision That Trade-marks Were Clearly Descriptive

Court Upholds Decision That Trade-marks Were Clearly Descriptive
Worldwide Diamond Trademarks Limited v. Canadian Jewellers Association, 2010 FC 309 (Kelen, J.)

March 17, 2010

Ken F. MacDonald for the Applicant, Worldwide Diamond Trademarks Limited
No one appearing for the Respondent, Canadian Jewellers Association

This was an appeal by Applicant pursuant to Section 56 of the Trade-marks Act (the “Act”) from a position of the Registrar of Trademarks (sitting as the Trademarks Opposition Board) where the Registrar had rejected the following applications as being clearly descriptive of the associated wares and services:

The Canadian Diamond Report, the mark of a diamond is mined, cut and polished in Canada;
The Canadian Diamond Certificate, the mark of a diamond that is mined, cut and polished in Canada; and
The Canadian Diamond Appraisal: the mark of the diamond that is mined, cut and polished in Canada (collectively “Trade-marks”).

Each of the above had a stylized logo associated with the trade-mark, and each had been rejected based on Section 12(1)(b) of the Act.

Certain new evidence was filed on the appeal, aimed in part at demonstrating that the proposed trade-marks had acquired distinctiveness. In reviewing the new materials, particularly those intended to establish the acquired distinctiveness of the proposed Trade-marks, the Court was unable to conclude that the new evidence would affected the Registrar’s decision. The Court dealt in short order with the Appellant’s submissions that the proposed Trade-marks were not clearly descriptive because either they incorporate portions of previously accepted trade-mark registrations, or because the words “report” and “market” many meanings, or because the flag-like element proposed Trade-marks is dominant and so renders them non descriptive. In response, the Court found that whether or not the proposed Trade-marks contained words which formed portions of previously accepted Trade-mark applications was of little probative value, quoting previous case law for the proposition that “if the registrar has erred in the past, there is no reason to perpetuate that error”. Further, he commented that “[w]hen the Court reads the proposed the Trade-marks is hard to see how they do not clearly describe the wares in question, namely Canadian diamonds and Canadian diamond certificates or reports of authenticity and evaluations and appraisals”. In respect of the multiple meanings described to “report” and “mark”, the Court noted that “abstract dictionary references, divorced from the context where they are situated, cannot be used to transform a proposed trade-mark that, on first impression, is clearly descriptive, into one that is not”.

Turning to the final issue, that is, acquired distinctiveness, the Court commented that most of the evidence related to use subsequent to April 4, 2004, the date the applications for the Trade-marks were filed, and as such was not irrelevant to the period for consideration. The Court did not find the necessary strong evidence that the Trade-marks were distinctive as at the time of the application and so found that there was no acquired distinctiveness. The Court upheld the Registrar’s decision that the Trade-marks were clearly descriptive and as such contrary to Subsection 12(1)(b) of the Act.

In conclusion, the Court opined “[s]eeking such a trade-mark for a Canadian diamond is analogous to seeking a trade-mark such as “A COFFEE SHOP” for a coffee shop”.

By: Shaun B. Cody, Gowling Lafleur Henderson LLP