In 130872 Ontario Inc. o/a Factory Direct Medical, HPU Rehab and HPU Medical Wholesale and Canadian Home Medical Group Inc. The Trademarks Opposition Board refused registration of the design mark shown below on the basis of clear descriptiveness and non-distinctiveness.
The decision offers an example of when composite marks may be considered clearly descriptive despite containing design components.
The Canadian Home Medical Group Inc. (the “Applicant”) filed the trademark below in association with the Class 12 goods Motorised wheelchairs for the disabled and those with mobility difficulties; motorized wheelchairs; wheelchairs:
130872 Ontario Inc. o/a Factory Direct Medical, HPU Rehab and HPU Medical Wholesale (the “Opponent”) raised grounds of opposition and in support filed affidavit evidence. The Applicant elected not to file any evidence.
The main ground of opposition under consideration in the proceeding was whether the mark is clearly descriptive and unregistrable pursuant to s. 12(1)(b) of the Trademarks Act. In considering this ground, the Board found that the design elements of the applied-for mark, shown above, were not the dominant feature of the mark. Further, the Board indicated that, whether or not the words “EASY FOLD” were presented as one word in the design mark was irrelevant, since the test considers how a mark is sounded, as discussed further below, and that, as a matter of immediate impression, the words EASY and FOLD would be sounded as two separate words. As a result, the word components that comprise the mark were found to be clearly descriptive of a wheelchair that is easy to fold, and the words present in the mark were found to comprise the dominant and influential feature of the mark, as opposed to the design elements.
When assessing composite marks for clear descriptiveness, the Registrar will refuse registration if the clearly descriptive word element is the dominant feature of a combination trademark. The test used (established by Best Canadian Motor Inns Ltd v Best Western International, Inc (2004), 2004 FC 135 (CanLII), 30 CPR (4th) 481) involves a consideration of whether a prospective consumer would, as a matter of first impression, perceive the word element as being the most influential or prominent feature of the trademark. In doing so, Examiners will look at the trademark in its totality, and compare the visual impression created by the word element(s) to the visual impression created by the design element(s). Where the design element of the trademark does not stimulate visual interest, the word element will be deemed dominant.
Factors that may be considered by Examiners in assessing the visual impression created by the elements include the size of the words and the size of the design, the font, style, color, and layout of the lettering of the words, as well as the inherent distinctiveness of the design element.
Based on the definitions above, the Registrar takes the position that only one element in a trademark can be dominant. Therefore, in situations where the word element and the design element are considered to be equally influential or prominent in a trademark, the Office generally considers that neither can be the dominant feature of the trademark. When the word element of a combination trademark is not the dominant feature of the trademark, the Registrar generally considers that the trademark in its totality cannot, when sounded, be clearly descriptive or deceptively misdescriptive of the associated goods or services.
In the instant decision, the Board held that, while EasyFold may appear as one word, the test is whether the mark is clearly descriptive when sounded, and, as a matter of immediate impression, the Board found that the words EASY and FOLD would be sounded as two separate words. Relatedly, the Board found in favour of the Opponent on the ground that the EasyFold mark was non-distinctive, as a trademark which is clearly descriptive of the character or quality of the goods cannot serve to distinguish an applicant’s goods from those of others, and the Applicant submitted no evidence of acquired distinctiveness to counter the Opponent’s allegation.
The Opponent also raised grounds of opposition based upon non-distinctiveness under section 2 of the Trademarks Act, non-entitlement under section 16(1)(a), and non-entitlement under section 38(2)(f). The Opponent also argued that there was nothing distinctive about the oval design element in the mark to suggest that consumers would identify the mark by the oval element rather than the word portion which, when sounded, consists of the clearly descriptive phrase “Easy Fold Portable Power Wheelchair”.
With respect to the section 38(2)(c) and 16(1)(a) ground of opposition, the Opponent alleged that the Applicant was not the party entitled to register the mark since the filing date of the application because the mark was confusing with the Opponent’s common law trademark ‘EZee Fold’, previously used or made known by the Opponent in Canada in association with motorized wheelchairs and scooters. However, the Board found that the Opponent’s evidence did not demonstrate use or making known at any time, and so the ground did not succeed.
The Opponents s. 38(2)(f) ground of opposition was also rejected by the Board, which noted that this provision does not address an applicant’s entitlement to register the mark relative to another person’s trademark, pursuant to s. 16 of the Act. Instead, s. 38(2)(f) addresses an applicant’s lawful entitlement to use the trademark, for example, in compliance with relevant federal legislation and other legal obligations prohibiting “use” of the trademark within the meaning of the Act. In the circumstances the Opponent provided no pleadings, evidence or submissions in support of the application of this ground.