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Trademark Service Quality Statements & Registrability – Part 2

By Dave MacDonell on December 9, 2013

In some classic examples, the trade-mark WATERWOOL was deemed registrable in Deputy Attorney-General of Canada v. Jantzen of Canada Limited (1964), 46 C.P.R. 66 because the mark was vague enough to be only ‘suggestive’ as to its character (i.e. it might be referring to a garment of some kind, but it’s equally likely that it refers to something completely unrelated to wool). The same went for the dog food trade-mark GRO-PUP in Kellogg Co. of Canada Ltd. v. Registrar of Trade Marks [1940] Ex. C.R. 163. In that case, Angers J argued that the mark was merely ‘suggestive’ of the result it was responsible to produce (i.e. the mark was not necessarily descriptive of dog food).

By contrast, the trade-mark HELPING DOGS LIVE LONGER LIVES was characterized as descriptive in Quaker Oats Co. of Canada Ltd. v. Ralston Purina Canada Inc. (1987), 18 C.P.R. (3d) 114. This case was held to be distinguishable from Kellog v Registrar because the immediate impression of the mark would lead the average consumer (OBJECTIVE STANDARD) to believe that the goods actually help their pets live longer. As such, the mark is descriptive of the character of the wares.

A good example of a mark that is misdescriptive of character or quality is SHAMMI in Deputy Attorney-General of Canada v. Biggs Laboratories (Canada) Limited (1964), 42 C.P.R. 129. In that case, the SHAMMI glove did not actually contain a single modicum of chamois/shammy and as such, Dumoulin J argued that it was misdescriptive. He went on to argue that any wares or services, advertising components that do not exist, would naturally fall within this category.

Conclusion

Determining whether a trade-mark is descriptive/misdescriptive of character or quality is not an easy task. Completing these registrations requires an astute legal mind that understands the degree of precision required to protect entrepreneurs in today’s marketplace. As such, it is always advisable to hire experienced counsel for these matters, so as to avoid any complications and future liability that may arise in the foreseeable future.

 

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