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Trademarks - Trademark Examination Manual (TEM). Therme Development (CY) Ltd. v. Nordik Spa Village Chelsea Inc.
In Therme Development (CY) Ltd. v. Nordik Spa Village Chelsea Inc. (Fed CA, 2026) the Federal Court of Appeal dismissed an appeal, here brought against "a decision of the Federal Court (2024 FC 1765, the Decision) that granted in part an application by the respondents ... seeking an Order pursuant to sections 57 [SS: 'Exclusive jurisdiction of Federal Court'] and 58 [SS: 'How proceedings instituted'] of the Trademarks Act".
The court considers an extract from the government's 'Trademarks Examination Manual', here within a party's submission:[14] As guidance for when a word element dominates, TD cites the Government of Canada’s Trademarks Examination Manual at paragraph 4.4.10:In determining whether a word element is the dominant feature of a combination trademark, examiners will consider whether a prospective consumer would, as a matter of first impression, perceive the word element as being the most influential or prominent feature of the trademark. In doing so, examiners will look at the trademark in its totality, and compare the visual impression created by the word element(s) to the visual impression created by the design element(s). Where the design element of the trademark does not stimulate visual interest, the word element will be deemed dominant.
Factors that may be considered by examiners in assessing the visual impression created by the elements include the size of the words and the size of the design, the font, style, color and layout of the lettering of the words, as well as the inherent distinctiveness of the design element.
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When the word element of a combination trademark is not the dominant feature of the trademark, the Registrar considers that the trademark in its totality cannot, when sounded, be clearly descriptive or deceptively misdescriptive of the associated goods or services.
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