Trade-Marks Examination Manual (page 31 of 55)

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IV.4.9 Suggestive Trade-marks

A trade-mark that does not clearly describe the character or quality of the wares is sometimes referred to as a suggestive trade-mark. The trade-mark Waterwool was held registrable in relation to a list of wearing apparel for men and ladies in Deputy Attorney-General of Canada v. Jantzen of Canada Limited (1964), 46 C.P.R. 66 at p. 72. President Jackett reviewed the evidence and concluded as follows:

My first impression, and my present impression, is that Waterwool may mystify the person who is confronted with it in association with a garment; it may even vaguely suggest some association with wool; but it does not describe the garment as being made of the wool of any animal.

The Gro-Pup case is often cited with respect to a mark found to be suggestive rather than descriptive. This case is reported as Kellogg Co. of Canada Ltd. v. Registrar of [1940] Ex. C.R. 163. After reviewing the evidence, Angers J. stated at p. 170:

…I do not think that the word 'Gro-Pup' is descriptive of the article to which it is to be applied, namely, dog food; it is at the utmost suggestive of the result

However, in Quaker Oats Co. of Canada Ltd. v. Ralston Purina Canada Inc. (1987), 18 C.P.R.(3d) 114, the trade-mark Helping Dogs Live Longer Lives was refused for being clearly descriptive and not registrable. The Chairman of the Opposition Board, G.W. Partington, had the following to say in finding the mark clearly descriptive of the result.

…I am of the view that the average purchaser of dog food would immediately conclude that the trade mark Helping Dogs Live Longer Lives as applied to such wares would clearly describe to the purchaser that the use of the applicant's wares would result in their pet living a longer and healthier life. As such, the present situation is clearly distinguishable from that considered by Mr. Justice Angers in Kellogg Co. of Canada Ltd. v. Registrar of Trade Marks, [1939] 3 D.L.R. 65, [1940] Ex. C.R. 163, where the learned trial judge concluded that the trade mark Gro-Pup as applied to dog food was 'at the utmost suggestive of the result which it is liable to produce'. Further, I do not consider that the Gro-Pup decision can any longer be considered as authority for the proposition that the result that an article of commerce is liable to produce is not such as to render a description of that result unregistrable as a trade mark for that article: see Sharp Kabushiki Kaisha v. Dahlberg Electronics, Inc. (1983), 80 C.P.R. (2d) 47 at pp. 51-5.

IV.4.10 Conditions of Production — Clearly Descriptive or Deceptively Misdescriptive in the English or French Languages

If the mark applied for is clearly descriptive or deceptively misdescriptive of the conditions of production, an action objecting to registration should be issued to the applicant. In Staffordshire Potteries Ltd. v. Registrar of Trade Marks (1976), 26 C.P.R. (2d) 134, the Court refused the application for registration of the mark Kilncraft on the grounds that the first impression of a person seeing the mark would be that the wares (tableware) were produced by a kiln process. It followed that if the wares were not produced in this way, the mark would be deceptively misdescriptive.

IV.4.11 Persons Employed in the Production of — Clearly Descriptive or Deceptively Misdescriptive in the English or French Languages

A word clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares or performance of the services is not registrable. The word "potter" would not be registrable for pottery, nor would the word "baker" be registrable for bread.

IV.4.12 Place of Origin — Clearly Descriptive or Deceptively Misdescriptive Of

A word which is found in an atlas or gazetteer as the name of a place may or may not be registrable. The issue is whether the word is clearly descriptive or deceptively

The examiners must determine if, as a matter of first impression, a dealer in or purchaser of the wares or a user of the services would perceive the word as the place

In Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R. (3d) 183, the Court upheld the Registrar's decision that Milan Showergel as a proposed trade-mark for lathering soaps, detergent rinses and like showering material was

Similarly, in T.G. Bright & Co., Ltd. v. Registrar of Trade Marks (1985), 4 C.P.R. (3d) 64, the Court upheld the Registrar's refusal of the application for the trade-mark Casablanca as a proposed mark for wines. The mark was deemed deceptively misdescriptive of the place of origin of the wares.

See also the decision in respect of the mark Brights French House (1986), 9 C.P.R.(3d) 239.

In Dower Bros. Ltd. v. Registrar of Trade Marks [1940] Ex. C.R. 73, the words French Room, applied for in association with certain types of shoes, were held as being descriptive or misdescriptive of their place of origin and therefore unregistrable. It is commonly accepted that France was then, and is now, noted for its fashions and accessories.

In examining the application, the examiners will find the mark to be clearly descriptive of the place of origin if the mark applied for is the geographical name of:

the place from which the associated wares or services originate (applicant's place of business);
an area, region or country which has an established reputation as a source of production of the wares or services with which it is associated; or
a place widely recognized as a manufacturing, trading or industrial centre and a likely source of a wide variety of products.

With respect to Nos. 2 & 3, if the wares do not emanate from that geographical area, the mark will be found to be deceptively misdescriptive of the place of origin. The examiners must keep in mind that a design mark also may be clearly descriptive or deceptively misdescriptive of the place of origin. An application for a shamrock for linen, for example, may be either clearly descriptive or deceptively misdescriptive of

Certain cities, states, areas and countries have, as a result of natural resources combined with expertise, developed world-wide reputations as producers or manufacturers of certain products. Britain and areas therein are famous for bone china and finished steel. Spain is noted for certain types of wines; France and Germany for other types. Switzerland is noted for watches, chocolate and cheese; California for wines.

If the examiners believe that a dealer in or purchaser of the wares or services would, upon seeing the design or word associated with the wares, conclude that the wares or services emanated from the place named, the mark should be objected to pursuant to paragraph 12(1)(b). If the place named is not in fact the place of origin of the wares or services, then the mark is deceptively misdescriptive of the place of origin and

Some geographical names, however, are acceptable in that they are not regarded as the place of origin of certain wares or services. Hollywood, the Strand, the Riviera, Fifth Avenue and Pall Mall are all place names which, one might argue, a person primarily associates with a mood, an atmosphere or a sense of well being. Nevertheless, a prohibition may be attached to their use, depending on the nature of the associated wares or services.

IV.4.13 Certification Mark — Place of Origin

A certification mark which is descriptive of the place of origin of wares or services is registrable if the applicant is the administrative authority of a country, state, province or municipality which includes or forms part of the area indicated by the mark, or is a commercial association having an office or representative in that area. See also sections II.7.5.3 and III.7.3 of this manual.

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