Descriptive When Sounded

Mastering the Law of Trademarks

Canadian trademark legislation precludes the registration of marks that are, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive of:

  • the character or quality of the goods or services in association with which the mark is used or proposed to be used;
  • the conditions of their production;
  • the persons employed in their production; or
  • their place of origin.

Descriptive when sounded

The bar on the registration of clearly descriptive or deceptively misdescriptive marks applies whether the mark is depicted, written or sounded. Thus, a mark that is not visually clearly descriptive or deceptively misdescriptive when depicted or written may still be unregistrable if it is clearly descriptive or deceptively misdescriptive when sounded.

JAVACAFE

JAVACAFE has been refused registration as a trademark for coffee powder, cooked coffee beans, and various other coffee related products. The Federal Court of Appeal stated that although the trademark in issue was not two separate words, "java" and "café", but was instead a single coined word JAVACAFE, this distinction was lost when the trademark was sounded in the French language. When sounded, the trademark was effectively two words, namely "JAVA" and "CAFE", which were clearly descriptive of the character, quality or place of origin of the various coffee related products.

View the decision

Phonetic equivalent

The prohibition on clearly descriptive marks can apply to phonetic equivalents. The corruption or misspelling of an otherwise clearly descriptive word has been found to be unregistrable.

THOR-O-MIX

THOR-O-MIX has been refused registration as a trademark for ready-made concrete. A Canadian court determined that the THOR-O-MIX trademark, when sounded, had the same significance as if it were written "thorough-mix". Since "thorough-mix" could not be registered because it was clearly descriptive, THOR-O-MIX could also not be registered.

The material made available on this website does not constitute legal or professional advice and should not be relied upon as such. Always obtain legal advice promptly in deciding an appropriate course of action for your particular situation.