Ruling deems word element dominant over larger, more complex design element
The Federal Court of Appeal has upheld the Federal Court’s finding of confusion between the appellant’s THERME mark, pronounced in English as “THER-MA,” and the respondents’ THERMËA trademarks, pronounced in English as “THER-MAY-A” or “THER-ME-A.”
The respondents in Therme Development (CY) Ltd. v. Nordik Spa Village Chelsea Inc., 2026 FCA 85, applied to strike out some services listed in association with four trademark registrations owned by the appellant under ss. 57 and 58 of the Trademarks Act, 1985.
In November 2024, the Federal Court partly granted the respondents’ application. The Federal Court issued the following disputed findings:
- When sounded, the appellant’s THERME WOMAN mark and THERME WOMAN’S HEAD mark were clearly descriptive in the French language of the character of some of the listed services, contrary to s. 12(1)(b) of the Trademarks Act
- When sounded, the appellant’s THERME mark, THERME WOMAN mark, and THERME WOMAN’S HEAD mark were deceptively misdescriptive in French of the character of some listed services, in breach of s. 12(1)(b) of the Trademarks Act
- In relation to some of the listed services, the appellant’s THERME mark and THERME GROUP mark were confusing with the respondents’ THERMËA trademark registrations, in violation of s. 12(1)(d) of the Trademarks Act
The appellant appealed against the Federal Court decision.
Confusion finding affirmed
The Federal Court of Appeal dismissed the appeal with costs.
Regarding the Federal Court’s first disputed finding, the appeal court found no error in its conclusion that, when sounded, the THERME WOMAN mark and the THERME WOMAN’S HEAD mark were clearly descriptive in French of the character of the identified services.
The appeal court saw no error in the Federal Court’s understanding of the law. In deciding whether the marks were clearly descriptive when sounded, the Federal Court recognized the ruling in Best Canadian Motor Inns Ltd. v. Best Western International, Inc., 2004 FC 135, and the importance of the dominance of the word element.
Next, the appeal court set aside the Federal Court’s conclusion that the word elements were dominant due to their “accessibility for sounding compared to the design elements.” The appeal court held that the Federal Court should not have considered the fact that one could not sound the design elements.
The appeal court acknowledged that the marks’ design elements were larger and more complex than the word elements. However, the appeal court considered the marks’ word elements dominant.
The appeal court explained that the word THERME, not the less articulable design elements, would be at the front of the mind of a prospective consumer viewing both marks, as a matter of first impression.
Regarding the Federal Court’s second disputed finding, the appeal court saw no reviewable error in its conclusion that, when sounded, the THERME mark, the THERME WOMAN mark, and the THERME WOMAN’S HEAD mark were deceptively misdescriptive in French of the character of the identified services.
The appeal court ruled that the Federal Court issued factually suffused findings based on common sense, did not misunderstand the applicable law, committed no extricable legal error in analyzing the issue, and made no palpable and overriding error warranting interference with the decision.
Regarding the Federal Court’s third disputed finding, the appeal court upheld its finding of confusion between the appellant’s THERME mark and the respondents’ THERMËA trademarks. The appeal court saw no legal error and no palpable or overriding error in the Federal Court’s factually suffused conclusion on this issue.
The appeal court said it was unclear whether an expert could significantly help the Federal Court decide how an ordinary consumer would pronounce THERME in English. The appeal court noted that the Federal Court did not indicate that expert evidence would be unnecessary in all trademark cases or in all cases featuring coined or invented words with uncertain pronunciations.
