Hard Hat – Some Protection, but Not Enough

A recent Federal Court of Appeal decision upheld the trial decision that Société Laurentides Inc. (“SLI”) did not infringe the trade-mark of Osmose-Pentox Inc.(“OPI”).  SLI produced wood primers under the name “wood conservator”, and OPI is the registered owner of the design trade-mark CONSERVATOR DESIGN, where the “O” has been replaced with the image of a tilted hard hat.  OPI also sells wood primers under its CONSERVATOR trade-mark.  The full version of the decision is available here.

The question answered in the negative by the trial judge (and upheld on appeal) was whether OPI had a monopoly over the word CONSERVATOR and whether SLI was liable for infringement of OPI’s registered trade-mark.  The Court determined NO – SLI was merely using the descriptive word CONSERVATOR as a means to describe its product as being able to conserve and protect wood.  The Court confirmed this, referring to a defense available within the Trade-Marks Act, section 20(1)(b)(ii), which states that no registration of a trade-mark prevents a person from making a bona fide use of a term as a description of its wares, without having any effect of depreciating the goodwill of the registered owner.

There was no evidence raised at Court of there being any actual confusion and no evidence that a common purchaser would have suspected that SLI was using the descriptive term as a trade-mark.  Likewise, there was no evidence of any depreciation of goodwill or economic damage to OPI.

The Court summarized it nicely in the appeal decision at 17:

[17] There is no doubt that Osmose-Pentox enjoys the exclusive right to use the design mark CONSERVATOR DESIGN. However, as a design mark, the protection it has under the Act covers only the representation of the word “conservator” where the letters “o” or “eu” have been replaced by a hard hat, and does not extend to the words suggested by the design mark. In other words, the distinguishing feature of Osmose-Pentox’s design mark is only the hard hat. In the absence of the hard hat, it would be difficult to imagine that there would be any protection under the Act.

Therefore, the hard hat offered some protection, but not enough.

For more information on protecting your brand, or on trade-marks, contact me.

HALAL and KOSHER – potential trade-marks?

I came across an interesting case today: Islamic Society of North America – Canada v. Bank of Montreal, in which the Trade-Marks Opposition Board (“TMOB”) was asked to consider whether HALAL was distinctive for the purposes of identifying mortgages, mutual funds, and other investment products for the Bank of Montreal.

The case arose during the course of the trade-mark application process where any interested third party is entitled to “oppose” the trade-mark application, after it passes through initial examination by the Registrar of Trade-Marks, and before it is fully registered.  In this case, the opponent was the Islamic Society of North America – Canada, which claimed that the mark HALAL was descriptive of the quality or nature of the goods and services being offered.

The case re-confirms that a trade-mark can not be merely descriptive of the wares or the quality or nature thereof.  The word HALAL originates from the Qur’an, the Muslim holy text, and generally means lawful or permissible according to the teachings of Allah.  While generally associated with foods, HALAL can be extended to any wares and services, including lending practices.

The TMOB ultimately concluded that the trade-mark was not distinctive at the date of application, meaning that the applicant could not satisfy the TMOB that the use of the word HALAL was tied to its own wares and services.  In doing so, the TMOB considered extensive search results from GOOGLE to show that HALAL was used extensively and linked to many different sources, and could therefore not be linked to the single source, namely, the applicant.

The TMOB also stated that largely because of the extensive use of the term, the trade-mark is unregistrable according to section 12(1)(b) of the Trade-Marks Act, since it was generally accepted to describe the quality and nature of the wares and services offered.  And, if not descriptive, then it would be deceptively misdescriptive, since a large number of Canadians would expect the wares and services to comply with the meaning of the HALAL mark.

Trade-marks which describe the quality or nature of the product, or processes involved in production can potentially be registered as “certification marks”.  These special type of trade-marks do not distinguish a particular source of the wares and services, but rather highlight that wares and services have received a particular “stamp of approval” or certification which the public can rely on as being reviewed and approved.

For more information on trade-marks, contact me.