Trade-Marks Examination Manual (page 28 of 55)
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IV.4 Paragraph 12(1)(b) — Clearly Descriptive or Deceptively Misdescriptive
IV.4.1 Definition
Trade-marks which are in part or in whole composed of words must also be examined for any clearly descriptive or deceptively misdescriptive meanings, in English or French, as applied to the character or quality, place of origin, conditions of, or persons employed in the production of the associated wares or the performance of the services. The purpose of a paragraph 12(1)(b) objection to registrability of clearly descriptive words is that no one person should be able to appropriate such a word and place legitimate competition at an undue disadvantage in relation to language that is common to all. See General Motors Corp. v. Bellows (1949), 10 C.P.R. 101, at pp. 112-113.
The word "clearly" is not used in the sense of "accurately", but of "easy to understand…evident, plain." See Thorold Concrete Products Ltd. v. Registrar of Trade Marks (1961), 37 C.P.R. 166.
The purpose of denying registration to deceptively misdescriptive marks is to prevent the public from being misled with respect to the wares or services and to prevent the person making such misrepresentations from obtaining an unfair advantage over competitors. The word "deceptive" is key. A misdescriptive word is registrable, but a deceptively misdescriptive word is not. See sections IV.4.5 and IV.4.6 of this manual on misdescriptiveness.
IV.4.2 Examination under Paragraph 12(1)(b)
Trade-marks which, as a matter of first impression, appear to be unregistrable because of a descriptive significance, require very thoughtful analysis. The examiners must establish the case. To do so will require research into the language meanings of words and into the characteristics and properties of the broad spectrum of wares and services available to today's consumer. When faced with a design or composite mark, the examiners must also study the impression created by the non-word portion of the mark as it stands alone and/or the impression created in conjunction with that portion of the mark which is composed of reading matter.
If a paragraph 12(1)(b) objection is made, the examiners should explain the reasons for it fully when reporting to the applicant. It is not enough to quote dictionary meanings of a word and leave it to the applicant to determine how, in the examiners' view, the mark is clearly descriptive or deceptively misdescriptive in association with the wares or services applied for. Similar care must be exercised when requesting a trade-markconsidered objectionable under paragraph 12(1)(b).
It is important to keep in mind that the context within which a paragraph 12(1)(b) determination is made encompasses the meaning conveyed by the trade-mark and its relationship to the wares or services to which it is applied. See the Kold One decision, Provenzano v. Registrar of Trade Marks (1977), 37 C.P.R. (2d) 189, and the Federal Court of Appeal decision (1978), 40 C.P.R. (2d) 288.
The question to be asked is: What, as a matter of first impression, does the trade-mark tell the potential dealer in, or purchaser of, the wares or services? What does the mark lead such people to believe about the quality, character, or conditions of production, etc.? Does the mark tell them what the wares or services are, or describe them or describe a property which is commonly associated with them? If so, the mark should remain at the disposal of any other parties engaged in the production and distribution of similar goods or the performance of like services. Thus, an applicant would not be allowed to monopolize the word "juicy" for use in relation to apples, and a trade-mark affixed to a carton of ice-cream which reads "frozen dessert" would be considered to be unregistrable for the same reasons.
If, on the other hand, the mark deceptively misdescribes a property of the wares or services, then the examiners must also consider raising an objection to registration under paragraph 12(1)(b). The essence of unregistrability in this case is that the dealers in, or purchasers of, the wares would be deceived by the misdescription into
It is possible to avoid the clearly descriptive prohibition in some instances where the applicant agrees to disclaim that part of the mark which the examiners find objectionable. Thus, the trade-mark Pub Squash, when used in association with soft drinks and soft drink syrup or concentrates, would be eligible for registration on the condition that the right to the exclusive use of the word "squash" be disclaimed trade-mark.
Examiners may be guided by the comments of the judge in Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103, concerning the use of disclaimers in respect of deceptively misdescriptive matter of composite marks. Although the decision taken did not hinge on this issue, Dubé J., in reference to marks where the deceptively misdescriptive portion of the mark is a dominant feature of the
In my view a disclaimer ought not to be used in relation to deceptively misdescriptive matter so as to render the mark as a whole registrable when the unregistrable matter is the dominant feature of the composite mark. After all, the disclaimer does not appear on the mark and the deception stands visually overwhelming.
See section IV.9 of this manual on disclaimers. See also T.G. Bright & Co., Ltd. v. Institut National des Appellations d'Origine des Vins et Eaux-de-vie (1986), 9 C.P.R. (3d) 239.