A recent decision of the Trade-mark Opposition Board refused an application for the trade mark WEBBROKER on the grounds that the mark was clearly descriptive of the applied-for services.

The Facts

The applicant filed an application to register WEBBROKER for use in association with "securities brokerage and financial information services provided by electronic means" based on use in Canada. The opponent opposed the application on the grounds, among others, that the trade mark was not registrable because it was clearly descriptive or deceptively misdescriptive of the nature or the character of the applied for services.

The Evidence

Both parties filed evidence consisting of relevant dictionary definitions. In addition, the applicant filed evidence to show it had used the applied -for mark. Transactions attributable to the WEBBROKER branded services generated revenue in excess of $900 million for the period 1999 - 2004. In addition, at least $1 million had been spent on promotion and marketing since 1999.

Clearly Descriptive

The Hearing Officer found in favour of the opponent and the application was refused. The dictionary definitions and the extract from the applicant's website pointed to the clearly descriptive nature of the applicant's mark. The component "WEB" clearly points to the Internet and the component "BROKER" clearly describes the nature of the services offered by the applicant (or its licensee).

As a matter of first impression, the everyday user of the applicant's WEBBROKER services would assume that the applicant (or its licensee) was offering to perform brokerage services over the Internet. It did not matter that the applicant's mark was nominally coined as one word since, when sounded, consumers would hear it as two words ¯ "WEB" and "BROKER". It also did not matter that no other trader had yet used the phrase. The mark WEBBROKER was a phrase that should be open to all traders in such services to use.

Comment

While the principles developed by the courts to determine whether a trade mark is clearly descriptive are relatively clear, their application may not be. There are many reported cases in this area that can be difficult to reconcile.