One of the basic rules of Canadian trademark law is that a trademark that describes your goods and services, or a feature, trait or characteristic of your goods or services, cannot be registered. As a result, trademarks such as OFF for insect repellant, CAFÉ SUPREME for coffee, GRO-PUP for dog food, ONCE A WEEK for floor cleaner, and O’CEDAR for polish containing oil of cedar have all been denied registration in Canada. The philosophy behind this is that no one person should be permitted to monopolize descriptive words or phrases to market their goods and services and therefore potentially gain an unfair advantage over competitors.
There are, of course, exceptions to this basic rule of trademark law, and we refer you to the article entitled Choosing a winning trademark is key to creating a strong brand for more information in this regard.
In view of this basic rule of trademark law, it would seem pretty obvious that you could not register PIZZA, for example, as a trademark for pizza. However, PIZZA PIZZA is a registered trademark of Pizza Pizza Ltd. for – you guessed it – pizza. The Court in this case found that by doubling the descriptive word “pizza” (a technique grammarians refer to as reduplication), Pizza Pizza Ltd. had formed what amounted to a coined or invented phrase with “no specific descriptive connotation”. As a result, the Court was of the view that the trademark PIZZA PIZZA did not describe the goods of Pizza Pizza Ltd., that is, pizza. In reaching this decision, the Court noted that “[t]he expression “pizza pizza” is not a linguistic construction that is part of normally acceptable spoken or written English” and that “[t]he words “pizza pizza” do not go together in a natural way.” It therefore seems that reduplication can turn descriptive words into registrable trademarks. Indeed, Little Caesar Enterprises Inc. subsequently obtained registrations for PEPPERONI!PEPPERONI! and HAWAIIAN!HAWAIIAN! for pizza, and SPAGHETTI! SPAGHETTI! for pasta.
However, reduplication alone may not be the key. Eplett Dairies Co. Ltd. applied to register the trademark BON-BON for ice cream. Eplett argued that the trademark would be perceived as a “nonsense word” made up of a reduplication of the French word bon (meaning good) and was therefore not descriptive of ice cream. However, the Court disagreed. The Court was of the view that the trademark BON-BON was the equivalent of the French word bonbon, meaning candy, and that the consumer, when seeing the trademark, would think that the ice cream contained candy, tasted like candy or was sweeter than normal. Moreover, the Court noted that the dictionary definition of the French word bonbon indicates that the derivation of the word is the reduplication of the word bon, which squarely countered Epplet’s argument that the reduplication would be perceived as a “nonsense word”.
Recently, Tim Hortons (The TDL Marks Corporation) applied to register the trademark DOUBLE DOUBLE. Is this trademark descriptive? Should Tim Hortons be permitted to register it? Well, let’s consider the following. If you walk into any coffee shop in Canada and ask for a coffee “double double”, the barista will know to add two creams and two sugars to your coffee. While the trademark is a reduplication of the word double, the expression double double is part of our everyday spoken language. In fact, the expression double double is now included in the Canadian Oxford Dictionary and is defined as a coffee with two creams and two sugars. In the PIZZA PIZZA case, the Court pointed out that “the expression ‘pizza pizza’ is not a linguistic construction that is a part of normally acceptable spoken or written English” and that “the words ‘pizza pizza’ do not go together in a natural way”. Clearly, the same cannot be said of DOUBLE DOUBLE.
As a result, it would appear that Tim Hortons could potentially face an uphill battle. This would certainly appear to be the case if they were applying to register the trademark for coffee. However, in what may be a clever move on their part, Tim Hortons has in fact applied to register DOUBLE DOUBLE for coffee additives. Is DOUBLE DOUBLE clearly descriptive of coffee additives? What do you think?
The Tim Hortons application to register DOUBLE DOUBLE is still making its way through the Canadian Trademarks Office. A decision as to whether it can be registered has not yet been made. We will keep you posted.
Geneviève M. Prévost, Toronto