Worldwide Diamond Trademarks Limited v. Canadian Jewellers Association
The Federal Court of Appeal upheld the trial judge's application of paragraph 12(1)(b), concluding he did not err in law or in his approach to composite marks; the trade‑marks were properly found to be clearly descriptive and the words could be tested by sound since the design element was not dominant.
Source-derived case information.
- Citation
- 2010 FCA 326
- Parties
- Appellant: Worldwide Diamond Trademarks Limited; Respondent: Canadian Jewellers Association
- Court
- Federal Court of Appeal
- Jurisdiction
- Canada
- Judgment Date
- 30 November 2010
- Procedural Posture
- Appeal / Reasons Delivered From the Bench; Appeal Disposed of by Judgment (appeal Dismissed)
- Outcome
- Appeal dismissed.
- Legal Topics
- Descriptiveness, Distinctiveness, Composite Mark, Paragraph 12(1)(b) of the Trade‑marks Act
- Source Language
- en
Source-derived case record
Summary, issues, holding and outcome
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Parties
Worldwide Diamond Trademarks Limited
Appellant
Canadian Jewellers Association
Respondent
Procedural Posture
Appeal / Reasons Delivered From the Bench; Appeal Disposed of by Judgment (appeal Dismissed)
Legal Issues
- 1 Whether the trial judge erred in law or misapplied paragraph 12(1)(b) of the Trade‑Marks Act in finding the trade‑marks clearly descriptive
- 2 Whether the trial judge failed to consider the composite trade‑marks in their entirety and whether the distinctiveness of a composite mark may be tested by sounding the words when the design element is not dominant
Ratio Decidendi
The Federal Court of Appeal upheld the trial judge's application of paragraph 12(1)(b), concluding he did not err in law or in his approach to composite marks; the trade‑marks were properly found to be clearly descriptive and the words could be tested by sound since the design element was not dominant.
Court Disposition
Appeal dismissed.
Orders
- Appeal dismissed.
Full Case Text
Judgment text and source record
1 paragraphs
Worldwide Diamond Trademarks Limited v. Canadian Jewellers Association Court (s) Database Federal Court of Appeal Decisions Date 2010-11-30 Neutral citation 2010 FCA 326 File numbers A-163-10 Decision Content Federal Court of Appeal CANADA Cour d'appel fédérale Date: 20101130 Docket: A-163-10 Citation: 2010 FCA 326 CORAM: SHARLOW J.A. TRUDEL J.A. STRATAS J.A. BETWEEN: WORLDWIDE DIAMOND TRADEMARKS LIMITED Appellant and CANADIAN JEWELLERS ASSOCIATION Respondent Heard at Vancouver, British Columbia, on November 30, 2010. Judgment delivered from the Bench at Vancouver, British Columbia, on November 30, 2010. REASONS FOR JUDGMENT OF THE COURT BY: SHARLOW J.A. Federal Court of Appeal CANADA Cour d'appel fédérale Date: 20101130 Docket: A-163-10 Citation: 2010 FCA 326 CORAM: SHARLOW J.A. TRUDEL J.A. STRATAS J.A. BETWEEN: WORLDWIDE DIAMOND TRADEMARKS LIMITED Appellant and CANADIAN JEWELLERS ASSOCIATION Respondent REASONS FOR JUDGMENT OF THE COURT (Delivered from the Bench at Vancouver, British Columbia, on November 30, 2010) SHARLOW J.A. [1] Despite the able submissions of counsel for the appellant, we have not been persuaded that Justice Kelen erred in law or misapplied paragraph 12(1)(b) of the Trade-Marks Act, R.S.C. 1985, c. T-13, when he determined (2010 FC 309) that the trade-marks in issue are clearly descriptive. [2] Nor have we been persuaded that he failed to consider the trade-marks in their entirety when he accepted that the distinctiveness of a composite mark (that is, a mark composed of both words and a design element) may be tested by “sounding” the words if the design element is found not to be dominant. [3] This appeal will be dismissed. “K. Sharlow” J.A. FEDERAL COURT OF APPEAL NAMES OF COUNSEL AND SOLICITORS OF RECORD DOCKET: A-163-10 STYLE OF CAUSE: WORLDWIDE DIAMOND TRADEMARKS LIMTED v. CANADIAN JEWELLERS ASSOCIATION PLACE OF HEARING: Vancouver, British Columbia DATE OF HEARING: November 30, 2010 REASONS FOR JUDGMENT SHARLOW J.A. OF THE COURT BY: TRUDEL J.A. STRATAS J.A. DELIVERED FROM THE BENCH BY: SHARLOW J.A. APPEARANCES: Karen F. MacDonald Michael D. Manson FOR THE APPELLANT No one appeared FOR THE RESPONDENT SOLICITORS OF RECORD: Smart & Biggar Vancouver, British Columbia FOR THE APPELLANT