On May 5, 2026, the Federal Court of Appeal (per Locke J.A., Roussel J.A., and Heckman J.A.) (“FCA”) upheld a Federal Court decision invalidating portions of several THERME-formative trademark registrations owned by Therme Development (“Therme”). The decision is noteworthy for its treatment of descriptiveness (including bilingual analysis), confusion and expert evidence.
Therme Development (CY) Ltd. v. Nordik Spa Village Chelsea Inc., 2026 FCA 85
Background
Our blog on the earlier Federal Court decision is here.
Therme owns several Canadian trademark registrations for THERME and THERME-formative marks (including THERME, THERME GROUP, and stylized marks such as THERME WOMAN and THERME WOMAN’S HEAD) in association with spa and wellness services. Nordik Spa and its affiliate (“Nordik”) operate spa facilities in Canada and own THERMËA trademarks that were registered a few years prior to Therme’s registrations.
Nordik brought an application to invalidate or amend certain of Therme’s registrations on the basis that the THERME marks were clearly descriptive or deceptively misdescriptive of the services (particularly in French), and that some of the marks were confusing with Nordik’s earlier THERMËA marks. The Federal Court agreed in part and struck certain services from Therme’s registrations on these grounds. Therme appealed.
Issues
The FCA identified the following issues on appeal:
- Clearly Descriptive: Whether, when sounded in French, the composite marks THERME WOMAN, and THERME WOMAN’S HEAD are clearly descriptive of the character of certain services.
- Deceptively Misdescriptive: Whether, when sounded in French, the marks THERME, THERME WOMAN, and THERME WOMAN’S HEAD are deceptively misdescriptive of the character of certain services.
- Confusion: Whether the marks THERME and THERME GROUP are confusing with Nordik’s earlier THERMËA registrations in respect of certain services.
- As part of the confusion analysis, whether the Federal Court erred in excluding evidence from Therme’s linguistic expert.
Analysis
The FCA dismissed the appeal, leaving the Federal Court’s partial invalidation intact.
- Descriptiveness assessed “when sounded” — including in French
The FCA confirmed that descriptiveness must be assessed based on a mark’s phonetic meaning, including in either of Canada’s official languages (here, French). The evidence established that the word THERME—as pronounced similarly to thermes in French—is descriptive of spa-related services.
The Court also clarified the proper approach to composite marks. Where the word elements are dominant, their descriptiveness must be assessed “when sounded.” Although the Federal Court erred in aspects of its reasoning, the FCA nevertheless agreed that the word “THERME” dominated the marks, notwithstanding the presence of design elements.
This aspect of the decision is significant for two reasons. First, marks comprising English words may be refused or invalidated if they are descriptive when pronounced in French (and vice versa). Second, the addition of design elements will not overcome a finding of descriptiveness where the word element remains dominant in consumer perception.
- Clearly descriptive and deceptively misdescriptive are distinct concepts
The FCA emphasized that clearly descriptive and deceptively misdescriptive are distinct grounds under paragraph 12(1)(b) of the Trademarks Act. A mark need not first be clearly descriptive in order to be deceptively misdescriptive; the same mark cannot be both for the same services.
A mark is deceptively misdescriptive if it is likely to mislead the ordinary consumer as to the character or quality of the services. In this case, the trademarks suggest the availability of thermal baths at the spa when that is not the case. Direct evidence of consumer deception is not required; the Court may rely on common sense and judicial experience when making this determination.
- Confusion can turn on different languages and pronunciations
The FCA rejected the argument that descriptiveness in French precludes a finding of confusion in English. It is not inconsistent for a mark to be clearly descriptive in French, yet still give rise to confusion when assessed from the perspective of an English-speaking consumer.
In French, “THERME” is pronounced the same way as the descriptive French word “thermes,” thereby confirming that the mark was clearly descriptive of the services. However, the Federal Court found that in English, consumers would pronounce “THERME” as “THER-MA,” thereby making it phonetically similar to THERMËA. The FCA confirmed this factual finding and found no reviewable error that there was a likelihood of confusion with “THERMËA.”
Further, the FCA confirmed that, although the shared “THERM/THERME” element has low inherent distinctiveness, it nevertheless contributed to confusion due to the overall similarity in sound of both marks.
- Limited role for expert linguistic evidence
The Federal Court had excluded Therme’s linguistic expert evidence on the basis that it addressed matters within the ordinary knowledge of the Court. The FCA upheld this decision.
The FCA reiterated that confusion is assessed from the perspective of the ordinary consumer, and that courts are generally capable of assessing pronunciation and meaning without expert assistance. In particular, expert evidence was not necessary to determine how an average consumer would pronounce “THERME” in English.
Conclusion
This decision reinforces that Canadian trademark law applies a strict, consumer-focused and bilingual analysis to issues of descriptiveness and confusion. Brand owners must therefore take care to assess their marks in both official languages at an early stage, particularly where phonetics may give rise to descriptive meanings or confusion.
Therme has 60 days from the date of judgment to seek leave to appeal to the Supreme Court of Canada.