A Clearly Descriptive Engineering Trademark

In the recent case of Continental Teves AG & Co v. Canadian Council of Professional Engineers, the Federal Court of Canada dismissed an appeal of the Trade-mark Opposition Board’s refusal to register a mark.  The original application was brought by Continental Teves, a foreign corporation, to register the words ENGINEERING EXCELLENCE IS OUR HERITAGE for use as a trade-mark in Canada in association with wares, namely brake pads and rotors for land vehicles.  The Canadian Council of Professional Engineers (the “Council”), a national organization of the 12 provincial and territorial associations that license and regulate Canadian engineers, opposed the application.  It is the Council’s policy to oppose trademarks which consist of or include the term “engineering” in order to both protect the integrity of the titles of Canadian engineering professionals and to protect the public.

At issue on the appeal was whether the Hearing Officer erred in finding that the mark:

1. Was not clearly descriptive of the character or quality of the wares, based on section 12(1)(b) of the Trade-Marks Act;

2. Was deceptively misdescriptive of the character or quality of the wares, based on section 12(1)(b) of the Act; and

3. Was not distinctive of the wares based on the section 2 definition of “distinctive”.

Regarding the section 12(1)(b) prohibition on registering “clearly descriptive” and “deceptively misdescriptive” marks, the Court came to the same result, that the mark was not registrable, although for opposite reasons.  A mark is not registrable if it is either “clearly descriptive” or “deceptively misdescriptive”.  Whereas the Hearing Officer found the mark to be not clearly descriptive yet deceptively misdescriptive of the persons employed in the production of the wares, the Court found the converse – that the mark was “clearly descriptive” yet not “deceptively misdescriptive”.

Informing this reversal was the additional affidavit evidence from one of Continental Teves’ vice presidents, stating that the company employs a substantial number of engineers in the production of the wares in question and had done so for decades.  However, the Court also noted that nothing in the evidence established whether Canadian engineers were involved although it appeared that none were.  This additional evidence was enough to change the mark’s characterisation from “not clearly descriptive” to “clearly descriptive”  since it established that engineers were involved and the mark was therefore a clear description of the manner in which the wares are designed and produced.  Nothing in the evidence established whether the engineers involved were Canadian, but this did not matter since there was no evidence indicating or suggesting that the average consumer, on encountering the mark, would believe the wares were designed or produced by Canadian engineers.  Thus, the mark was not deceptively misdescriptive according to the Court.  The decision appears to be at odds with the earlier decision in Canadian Council of Professional Engineers v. Kelly Properties LLC, but in that case the Applicant was seeking to use KELLY ENGINEERING RESOURCES in association with employment services, which implied that Canadian engineers were involved since the services were being offered in Canada and only a licensed Canadian engineer could offer such services.

The Court came to the same result as the Hearing Officer on the finding of a lack of distinctiveness, noting that distinctiveness is “the very essence of a trademark” since it allows a consumer to identify the source of goods.  Continental Teves failed to meet its onus to prove the mark was distinctive of the wares in the face of the Council’s evidence showing the use of the phrase “engineering excellence” in Canada and abroad in multiple contexts.

Finally, the Court noted the Council was “zealous” in protecting the exclusivity of the words “engineer” and “engineering”, although this was not an endorsement or disapproval of the approach but only an observation regarding the policy.

A Professional Designation Can Be A Certification Mark: Canada’s Federal Court

In a decision rendered earlier this year, Ontario Dental Assistants Association v. Canadian Dental Association, the Federal Court of Canada held that a professional designation could function as a certification mark, although not  in the case at hand.

The case was an appeal from a decision of the Trademarks Opposition Board (TMOB) allowing the Canadian Dental Association’s opposition to the registration of the certification mark “CDA”.  The Ontario Dental Assistants Association (ODAA) had applied to register the certification mark “CDA” in association with dental assisting services, and more particularly to denote a dental assistant that possessed specific qualifications as approved by the ODAA.  The ODAA alleged use in Canada since at least as early as 1965.

The TMOB denied the registration of “CDA” as a certification mark on the basis that a professional designation could not function as a certification mark and consequently the acronym “CDA” could not be said to have been used as a certification mark from the time claimed by ODAA in its application.  The TMOB also held that the certification mark “CDA” was not distinctive enough to be registered, given its use by the Canadian Dental Association as an acronym to refer to itself.

On appeal, the Federal Court focused on paragraph (c) of the definition of “certification mark” in section 2 of the Trade-Marks Act: “means a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to… (c) the class of persons by whom the wares have been produced or the services are performed… from wares or services that are not of that defined standard.”

The Court held that the definition must be viewed in the context of the Act as a whole and listed the criteria a certification mark must meet, namely: not be clearly descriptive or deceptively misdescriptive of the wares or services; be distinctive; not be used by the owner, but only by authorized licensees; not be confusing with a registered or previously applied for trade-mark or trade name; and be used in accordance with section 4 of the Act which includes, with respect to services, use or display in the advertising of the services.  The Court disagreed with a 1988 Opposition Board decision, Life Underwriters Association of Canada v. Provincial Association of Quebec Life Underwriters, which suggested that a professional designation could never serve as a valid certification mark, and found that there is nothing in the Act to preclude a valid certification mark from being registered for a professional designation, so long as the mark satisfies the listed criteria.

Despite this finding, the Court dismissed the ODAA’s appeal on the grounds that the ODAA had not established use of the acronym “CDA” as a certification mark since as early as 1965.  Documents issued by the ODAA to dental assistants did not constitute use by licensees or certified users and name tags evidenced use by dental assistants to show their membership in the association, but not to distinguish the services performed.  Moreover, the mark was not distinctive given its use by the Canadian Dental Association.

Thus, while the ODAA was not successful, it is now clear that a professional designation could constitute a certification mark, if the criteria are met.

No Trademark Monopoly: Red Horse / Black Horse

Red Horse Black Horse

In January 2013 the Federal Court considered whether an ordinary beer drinking consumer, on hearing the words RED HORSE, would likely think that RED HORSE must be a beer made by the same company that makes BLACK HORSE.  The Court’s response: “unlikely”.

This decision was reached in San Miguel Brewing International Ltd v. Molson Canada, in which the Federal Court allowed an appeal by San Miguel from the refusal of the Trade-Mark Opposition Board to register San Miguel’s RED HORSE trademark and horse head design.

In the proceedings before the Board, the Member analysed the surrounding circumstances to determine whether the RED HORSE mark was confusing with the  BLACK HORSE trademark in the minds of the relevant consumer.  The Member found that the RED HORSE mark had noteworthy design features, but the word HORSE in the mark rendered it too similar to the BLACK HORSE mark.  Accordingly, the Board denied registration on the basis of confusion.

On appeal, Justice Phelan of the Federal Court applied the well-established test set out in the Supreme Court of Canada decision of Masterpiece  Inc. v. Alavida Lifestyles Inc., emphasizing that one has to: (1) look at the mark as a whole and not tease out each portion of the mark; (2) approach confusion on the basis of first impression, from the perspective of the average person who goes into the market; and (3) use common sense.  The average consumer being the “‘ordinary harried purchaser’ – neither the ‘careful diligent purchaser’ nor the ‘moron in a hurry'”.  Justice Phelan held that the ordinary purchasers in this case were beer drinkers “sensitive to the names of beers and to what they know and like”.  The ordinary purchaser was not the “non-beer drinking life partner who is asked to pick up beer”.

In reversing the Board’s decision, the Court concluded that one look at the labels above, and common sense, was “sufficient to dispel any notion of confusion”.  The Court then went on to state that the Member did not consider that in refusing to register the RED HORSE trademark, Molson was effectively being granted a trademark monopoly over the word HORSE of any colour in relation to beer.  The breadth of that monopoly was found to be unreasonable.

It is clear that Justice Phelan looked at the marks as a whole, including the design element.  It is also of note that he focused on a beer-drinking consumer and not just an average consumer.  However, it is the concern about granting a monopoly that is most interesting.

An Interplay of Canadian Official Marks and Canadian Trademarks

A February 2010 blog, “Professional Designations and Abbreviations, Acronyms and Initials” discussed the summary judgment and permanent injunction obtained by the College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia (“the College”) against the Council of Natural Medicine College of Canada (“the Council”) pursuant to which certain trademarks which the Council had registered, such D.C.T.M (DOCTOR OF TRADITIONAL CHINESE MEDICINE) and REGISTERED D.P.C.M, were expunged on the basis that the marks were clearly descriptive or deceptively misdescriptive (contrary to s.12(1)(b) of the Trade-Marks Act) and recognised in Canada as designating the services of doctors of Traditional Chinese Medicine and acupuncturists (and therefore contrary to s.10).  The Council was also enjoined from registering similar trademarks.  The Council appealed this decision, but subsequently discontinued the appeal.

The Council did, however, bring an application for judicial review asking the Federal Court to set aside the notice given by the Registrar of Trade-marks of the adoption and use by the College of various official marks, including D.C.T.M (DOCTOR OF TRADITIONAL CHINESE MEDICINE) and REGISTERED D.P.C.M.  Section 9(1)(n)iii) grants protection to “any public authority” in Canada that adopts and uses a mark and in respect of which the Registrar of Trade-marks has given notice.  In Council of Natural Medicine College of Canada v. College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia the Federal Court concluded that the official marks were valid and that section 9(1)(n)(iii) was constitutional.

As explained in the decision, the Council is a private non-profit company incorporated under federal legislation which created educational programs in traditional Chinese medicine.  The courses were offered by affiliated private schools.  Prior to the earlier Federal Court decision the Council also entered into trademark licence agreements with the graduates of its programs.  The College, however, had been established under the British Columbia Health Professions Act to regulate the practice of traditional Chinese medicine, including the titles that could be used by practitioners.  Read more

Both Here and There: Trademark Use on Websites Available in Canada

According to a December, 2012 decision of the Federal Court, HomeAway.com, Inc v. Hrdlicka, “a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-marks Act purposes, use and advertising in Canada.”  This broad statement suggests that the appearance of a trade-mark on a computer screen is sufficient whether or not services are available or performed in Canada.  However, the decision is best understood in context. 

HomeAway.com, which acquired and now operates the well known Vacation Rentals by Owner or VRBO website at VRBO.com, sought to expunge the trade-mark VRBO which Hrdlicka had applied to register in 2009 for use in association with services described as “vacation real estate listing services”.  HomeAway.com sought to establish prior use of VRBO.  HomeAway.com had a computer presence in Canada, but no physical presence.  In analyzing section 4(2) of the Act which states that “a trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services”, the Court noted that there was little jurisprudence regarding use by means of a computer screen display.  The Court then adopted the concept that an activity can be “both here and there” from a series of earlier cases involving tax, criminal activity and copyright and sought to interpret section 4(2) “in a manner consistent with modern day realities”, namely “that information which is stored in one country can be said to exist in another; in this case Canada.”

The Court then went on to describe the HomeAway.com business as being “advertising, on its website, homes, apartments and the like owned by third persons who wish to rent them to others”, suggesting that HomeAway.com offers the same services as the Classifieds section of a newspaper.  The Court used the accessing of properties in “Montreal” and “Niagara-on-the-Lake” as examples of how the website might be used.  It is not clear whether there was actual evidence before the Court of Canadians posting and accessing properties on the website, but presumably this was available.

In the circumstances, Hrdlicka’s registration was expunged in light of HomeAway.com’s prior use, the absence of any use by Hrdlicka until 2012 and evidence that Hrdlicka was trying to sell his trade-mark to HomeAway.com.

The question now is whether the mere appearance of a trade-mark in advertising available on a website in Canada is enough to constitute use in association with services.  However, when the statement from the Federal Court is read in context, it would appear that the services must be available to or accessed by Canadians.  Some further case law may be necessary to clarify this point.

Bodum Gets French Pressed by Federal Court In Trademark Dispute

Canada’s Federal Court has recently handed Bodum USA, Inc. (Bodum) another loss in its ongoing fight to enforce its trademark and other intellectual property rights in this country.  In the most recent decision, the Court has found that the Canadian Registration for the trademark FRENCH PRESS is invalid and unenforceable.  This Registration is owned by Pi Design AG (Pi), a related entity to Bodum and the licensor of the mark to Bodum in Canada and covers wares described as non-electric coffee makers.

As a result,  Bodum’s infringement claims against Meyer Housewares Canada Inc. (Meyer) over its use of the FRENCH PRESS mark have been dismissed.  Even worse for Bodum, the Registration for FRENCH PRESS has been ordered expunged on the grounds that it should never have been issued in the first place and even if it was properly registered, that Registration is now invalid on the basis that the mark is descriptive and not distinctive of Bodum as the sole source of the goods that this mark is registered in association with.

When assessing the evidence presented by the parties, the Court found that the term “French Press” was already in widespread use in North America as a generic term describing a popular type of coffee making device in 1995, which Pi was aware of when it sought to register the mark in Canada and thereby claim exclusive rights to the mark.  The Registration for this mark issued in 1997.

Read more

I Hear You Calling – Sound Mark Applications Now Being Accepted

In a reversal of it’s long held position, the Canadian Intellectual Property Office (CIPO) has today announced that it is now accepting applications to register sound marks.  This announcement apparently comes as a result of ongoing Federal Court of Canada proceedings regarding an application filed in 1992 by Metro-Goldwyn-Mayer Studios Inc. (MGM) to register as a trade-mark in Canada, the sound of a roaring lion that precedes most, if not all, of their film productions.  

For many years, CIPO’s blanket policy has been to refuse all applications for sound marks on the basis that Section 30(h) of the Trade-marks Act requires “a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed” unless the application is for a word or words not depicted in a special form.  The MGM case is the first where the issue of the registrability of sound marks has been dealt with by the Federal Court.

CIPO’s new Practice Notice on applications for sound marks states that “The application for the registration of a trade-mark consisting of a sound should:

  1. state that the application is for the registration of a sound mark;
  2. contain a drawing that graphically represents the sound;
  3. contain a description of the sound; and
  4. contain an electronic recording of the sound.”

This change of tune for CIPO comes on the heels of a recent (and still outstanding) consultation on a number of proposed changes to the Trade-marks Act Regulations, including a proposal to permit registration of non-traditional marks, such as sound marks, motion marks and holograms.  Time will tell how many applicants decide to take advantage of this change of policy.  Certainly, there are a number of well known sound marks in the marketplace and registration of such marks has been possible in other important jurisdictions, such as the United States, for many years.