Don’t Sound Alone

Trademarks often include both textual elements (i.e. words) and design elements (e.g. shapes, graphic elements, etc.). Canadian courts and the Canadian Intellectual Property Office have found that such trademarks are clearly descriptive (and unregistrable under the Trade-marks Act) if they contain a dominant textual element that is clearly descriptive when sounded.

However, a consideration of the French version of the Act suggests that this approach may be incorrect. In other words, determining whether a trademark is clearly descriptive should not hinge solely on sounding the textual element of the trademark, even if that textual element is dominant.

The English and French versions of Canadian statutes are considered equally authoritative. The French version of paragraph 12(1)(b) of the Act (the section dealing with descriptiveness) begins with the words “qu’elle soit sous forme graphique, écrite ou sonore…”. Translated, this phrase means, “regardless of the nature or form of the mark, be it graphic, written or sounded…”. The section then goes on to state that the mark will not be registrable if the mark is clearly descriptive or deceptively misdescriptive.

[In comparison, the English version of paragraph 12(1)(b) states that a trademark is registrable if it is not “…whether depicted, written or sounded…” clearly descriptive or deceptively misdescriptive.]

The French version plainly provides that a trademark is to be assessed for descriptiveness without regard to the technical form of the mark (i.e. it does not matter whether it is a graphic mark, a written mark, or a sounded mark). It does not mandate having separate assessments of a mark’s descriptiveness based on its sounded version, its written version, and its depicted version. This approach is flexible and meshes with the well-established principle that the entirety of the mark must be considered and that a mark should not be dissected into its constituent parts in evaluating descriptiveness.

The phrase “whether depicted, written or sounded” in the English version of paragraph 12(1)(b) can be read harmoniously with the French version so as to mean, in effect, “whether the mark be one that is depicted, written or sounded, it must not be either clearly descriptive or deceptively misdescriptive …” .

The issue becomes real when a mark has a combination of textual and graphic elements. Should one consider the sound of the text only and disregard the graphic elements? The Best Canadian Motor Inns case (2004 FC 135) sought to resolve the difficulty by confirming a “dominant element” test. The Canadian Intellectual Property Office has subsequently relied on that case to state that unless the graphic element is dominant, the graphic element is effectively ignored and the sounded version of the textual element is solely used to assess descriptiveness.

Where a mark consists only of graphic elements, it is obvious that only the depicted version of the mark can be considered when assessing descriptiveness, and it would make no sense to try to assess a “sounded” version. For purely word marks that are not presented in any particular font or style, it makes sense that only the written or sounded version of the mark should be considered. However, where the mark includes both graphic and textual elements, the foregoing suggests that it is improper to consider only one of them to the exclusion of the other, regardless of whether one of them can considered to be “dominant”. The reference to “sounded” in paragraph 12(1)(b) does not justify sounding only the textual element in assessing descriptiveness and ignoring the graphic element.