By Richard Stobbe

A word that clearly describes a particular product or service cannot function as a trademark for that product or service. The Trademarks Act phrases this idea in a more formal way: section 12(1)(b) says that a trade-mark is registrable if it is not … “whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin”. (Emphasis added)

The case of  Primalda Industries Corp v Morinda, Inc., 2004 CanLII 71759 (CA TMOB), reviewed an application for the trade-mark TAHITIAN NONI Design, for the following wares: “skin care preparations; namely, cleansers, lotions, gels, moisturizing creams” and similar products. The term TAHITIAN NONI refers to the morinda citrifolia tree, which is commonly known as ‘NONI’ in the Polynesian language.  The application was opposed based on a challenge that the mark offended section 12(1)(b) since it was “clearly descriptive or deceptively misdescriptive” of the products, by virtue of the fact that the name is a clear description of ingredients in the skin care products, which are derived from the fruit of the ‘Tahitian NONI’ tree.

This might be like trying to register the word CANADIAN MAPLE in association with skin care products derived from, say, the syrup from the maple tree.

However, after reviewing the Act, the court rejected this ground of opposition. Why?

“It is self-evident from the legislation,” the Court said, “that words that might be descriptive in a language other than French or English are not subject to paragraph 12(1)(b). As the opponent alleges in its statement of opposition that ‘NONI’ is a Polynesian word and there is no evidence that it is an English or French word, I conclude that TAHITIAN NONI Design cannot be unregistrable pursuant to paragraph 12(1)(b).”

In short, a clearly descriptive word can be registrable in Canada as long as it is not descriptive in the English of French language.

Calgary – 07:00 MST