In Best Canadian Motor Inns Ltd. v. Best Western International, Inc. (decision rendered January 29, 2004 in T-656-02), the Federal Court has rendered an important decision that could impact significantly upon the registrability and validity of marks comprised of a design element in combination with descriptive text.
The applicant was seeking to register the trademark BEST CANADIAN MOTOR INNS & Design, for use in connection with hotel, restaurant and accomodation services. The mark was a design mark that included these words rendered in particular script, in combination with a Maple Leaf motif, framed by two parallel lines.
The Trademarks Opposition Board had rejected the application as being unregistrable as it failed to comply with s. 12(1)(b) of the Canadian Trademarks Act. S. 12(1)(b) provides that a trademark is not registrable if it is clearly descriptive or deceptively misdescriptive in English or French of the character or quality of the wares or service, whether depicted, written or sounded.
On appeal to the Federal Court, Mr. Justice Gibson was compelled to consider a recent decision rendered by Justice Russell of the Federal Court concerning the registrability of the mark GRILL GEAR & Flame Design. In the Grill Gear case, the Federal Court held that, when considering whether the mark was descriptive in depiction, appearance or sound, the impact of both the flame motif and the descriptive verbal components had to be considered. As such, Justice Russell held that the GRILL GEAR & Flame Design mark was registrable as it was not clearly descriptive.
Mr. Justice Gibson disagreed with Justice Russell's decision in Grill Gear and held that generally applicable principles of statutory interpretation required the plain meaning of the words "or sounded" to govern. As a result, Mr. Justice Gibson upheld the Opposition Board's decision, and maintained the decision that the mark BEST CANADIAN MOTOR INNS & Design was not registrable. In so doing, Mr. Justice Gibson has held that ordinary and plain meaning of the Act means that any design elements that are combined with textual components are to be disregarded in deciding whether a trademark is descriptive as "sounded". While recognizing the potential impact of his conflicting decision, Mr. Justice Gibson stated that any concerns should be addressed by Parliament.
Mark K. Evans, Toronto