The Canadian Trademarks Office will be issuing a Practice Notice regarding a change in practice with respect to trademarks that consists of a word and design element that are considered to be "clearly descriptive when sounded". As a result, there will be a significant change in how the Office will assess the registrability of such marks. The Practice Notice is in response to a recent decision by the Federal Court of Canada in Best Canadian Motor Inns Ltd. v. Best Western International, Inc.. In this case, the trademark comprised the words BEST CANADIAN MOTOR INNS along with a design element. The Court held that the word portion was considered to be the dominant feature of the trademark. As a result, the trademark was considered to be clearly descriptive of the character of the Applicant’s services "when sounded" and was deemed to be unregistrable.

type Trademark Bulletin - February 2005