Auberge & Spa Le Nordik Inc. v. Therme Development (CY) Ltd. 2024 FC 1765
Auberge & Spa Le Nordik Inc (Nordik) is the owner of trademark registrations for THERMËA and THERMËA & Design. The THERMËA Trademarks are registered in association with the services relating to the operation of a spa and wellness center offering saunas, therapeutic baths, whirlpool and cold baths, steam baths, floating baths, relaxing and therapeutic massages; body treatments for face, body and feet.”, and related goods and services.
Nordik and its sister company have operated Spas in Winnipeg and Whitby since 2015 and 2022 respectively. There has been a fair amount of promotion and advertising of the business.
Therme Development (CY) Ltd. (TD). is a resort developer and involved in the revitalization of Ontario Place in Toronto as a well-being destination. The THERME Registrations were to be used in association with various services and goods to be offered at Ontario Place. When TD advertised its THERME CANADA complex at Ontario Place, Nordik learned of TD’s use of the marks and objected.
Nordik brought application in the Federal Court to expunge specific services from trademark registrations for THERME, THERME GROUP THERME WOMANS HEAD LOGO and THERME WOMAN LOGO, owned by THERME Development (CY) Ltd. (TD). The attacked services primarily related to heath spa resort services (the Impugned Services). The grounds relied on by Nordik relate to the descriptiveness of the marks and other grounds.
A trademark is not registrable if, whether depicted, written or sounded, it is clearly descriptive in the English or French language of the character or quality of the services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin.
The word “clearly” in “clearly descriptive” means "easy to understand, self-evident or plain" (rather than “accurately”) and the word “descriptive” is considered in relation to the goods and/or services with which the trademark is used or proposed to be used. The word “character” means a feature, trait or characteristic of the goods and/or services.
One purpose of the above prohibition is to prevent the registrability of clearly descriptive words as no person should be able to appropriate such a word and place legitimate competition at an undue disadvantage in relation to language that is common to all.
TD asserted that the perceived meaning of THERME as sounded by an average Canadian Francophone consumer should be ignored and instead the opinion of its expert who offered a skilled linguistic analysis of the word in issue adopted. The Judge did not find that evidence helpful and found it to be inadmissible.
The Judge said as a French and English-speaking Canadian who has lived most of her life in the province of Quebec and who was aware that the word THERMES in the French language meant thermal baths/thermal bath establishments, it would not be common sense to set aside existing dictionary meanings that confirmed her understanding of the word THERMES in the French language on the advice of the expert.
The Judge was satisfied that Nordik had proved on a balance of probabilities that, when sounded in French, the THERME mark was clearly descriptive in the French language of the character of the impugned services specifically related to thermal baths and unregistrable. Those services included:
Design of health spa resorts, health and wellness centres which provide thermal baths, swimming baths;
Health spa resorts incorporating thermal baths, swimming pools, Turkish bath, mineral pool and hot tub facilities, hydrotherapy; Operation of thermal baths.
Nordik was also successful concerning THERME WOMANS HEAD LOGO and THERME WOMAN LOGO registrations. The Judge found that the ordinary Francophone Canadian consumer, as a matter of immediate impression after viewing either composite mark as a whole, would sound either mark as the French word THERMES and would easily understand that the service provided by TD (being among other things thermal baths) was clearly described in the THERME WOMAN’S HEAD mark and the THERME WOMAN mark as sounded by their dominant element THERME. Despite their visually appealing design elements, the THERME WOMAN’S HEAD mark and the THERME WOMAN mark as sounded are just as clearly descriptive of the character of the same services as referenced above and were unregistrable at the date of their registration. The Judge relied on an earlier decision where the writer was successful counsel.
Nordik failed concerning the THERME GROUP registration. The Judge found that given the applicable legal test and the additional word ‘GROUP”, they had not met their burden of showing that when the THERME GROUP trademark is used, it was clearly descriptive as sounded in French of the character of the impugned services at the date of their registration. However, Nordik’s attack of this registration on the other grounds asserted succeeded.
While there is agreement about the principles that apply to determine whether a trademark is clearly descriptive their application in a specific case may not be.
The test for determining whether a trademark is clearly descriptive is the immediate or first impression formed by the ordinary user or purchaser of the services in issue. The determination must not be based on research into or critical analysis of the meaning of the words. The common meaning of words in their ordinary and popular sense must be determined and the perspective of experts or people with special knowledge may not be representative of the average ordinary purchaser.
Adding design features to a composite mark may not avoid the limitation. A trademark, which when sounded, is clearly descriptive of the character or quality of the services in issue, may not be registrable despite the design features.
