A recent decision of the Trade-marks Opposition Board deals with the registrability of a domain name.

The Facts

The applicant applied to register the trade mark CROSSBORDERPHARMACY.COM in association with marketing services, ordering services and order fulfillment services relating to the sale of pharmaceuticals to consumers.

The opponent opposed the application on the grounds that the applied for mark was not registrable because it was clearly descriptive and not distinctive of the applicant’s services.

While a domain name that is registrable as a trade mark and used as a trade mark may be protected, the opponent raised significant issues concerning registrability.

Clearly Descriptive

A trade mark is not registrable if, when depicted, written or sounded, it is either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the services in association with which it is used.

The Hearing Officer observed that this issue must be considered from the point of view of the average user of the services. In addition, the mark must not be dissected into component elements and carefully analyzed, but must be considered in its entirety as a matter of immediate impression. In applying this statutory provision, it is well established that character means a feature, trait or characteristic of the services and “clearly” means easy to understand, self-evident or plain.

The fact that a particular combination of words does not appear in any dictionary does not prevent a trade mark from being found to be clearly descriptive. If each portion of a mark has a well known meaning in English or French, the combination may be contrary to the provisions of the Trade-marks Act. Even if a mark consists of a new combination, the dictionary meanings of the components should be considered.

The Hearing Officer concluded that it was self-evident that the mark as a whole indicated that the applicant’s services related to a pharmacy providing international sales via the Internet. As a result, it was concluded that the mark was clearly descriptive of the services and the application was refused.

Comment

If the applicant’s trade mark has been so used as to become distinctive, an application may be filed in the future for the trade mark notwithstanding that the mark is clearly descriptive. However, to proceed in this fashion, extensive evidence to support the acquisition of distinctiveness must be filed. In addition, the strength of this evidence can be challenged in an opposition