Engineering a Successful Trademark Opposition: Canada’s Federal Court finds that KELLY ENGINEERING RESOURCES mark is deceptively misdescriptive

A recent Federal Court decision in Canadian Council of Professional Engineers v. Kelly Properties, LLCreversed a prior Trademarks Opposition Board (TMOB) decision by holding that Kelly Properties’ KELLY ENGINEERING RESOURCES trademark application was not registrable. In the prior TMOB proceedings, the opposing party, Canadian Council of Engineers, was unsuccessful in its opposition to the KELLY ENGINEERING RESOURCES application. On appeal, the Federal Court had to consider three main issues.

Firstly, the Court had to consider the appropriate standard of review for an opposition appeal when new evidence was adduced. The Court affirmed that where new evidence has been filed, as was the case here, if such evidence would materially affect the TMOB’s findings, the Federal Court must come to its own conclusion as to the correctness of the decision after considering the evidence before it.

Secondly, the Court considered whether the TMOB had erred in its assessment of the date of first use of the KELLY ENGINEERING RESOURCES trademark. While the TMOB had been satisfied that Kelly Properties had used this trademark in Canada since April 1999, the Federal Court’s review of the material evidence indicated that this claim was not justifiable and that this should have been a valid ground for opposition. However, and importantly, Kelly Properties’ application was not based solely on the claim of prior use in Canada; the application was also filed on the basis of prior use and registration in the United States. The Federal Court affirmed a previous TMOB decision in Aetna Life Insurance Co of Canada v. SNJ Associates Inc. where it was held that the failure of a prior use basis in a trademark application does not defeat the application in its entirety if there is a separate claim on the basis of use and registration in a foreign country. Accordingly, while Kelly Properties’ application was compromised by its inaccurate Canadian first use date, ultimately its claim based on prior use and registration in the United States prevented the Canadian Council of Engineers from successfully opposing the application on this ground . This aspect of the decision reaffirms the importance of claiming more than one basis for registration when applying to register a trademark in Canada, if the facts allow for such additional claims to be made.

Thirdly, the Federal Court considered whether the KELLY ENGINEERING RESOURCES trademark was clearly descriptive or deceptively misdescriptive. The TMOB had found that the trademark was neither clearly descriptive nor deceptively misdescriptive. In considering the new evidence presented by the Canadian Council of Engineers, the Court ultimately came to the conclusion that the trademark was deceptively misdescriptive of the character and quality of the claimed services, despite the fact that the services included in the application did not include “engineering” services. In concluding that the trademark was not registrable, the Court noted that acceptance of this trademark would run the risk of opening up the door to abuse, thereby placing the public interest at risk due to the association between “engineering” and the regulation of the engineering profession in Canada. This battle may continue as Kelly Properties has until December 21, 2012 to appeal this decision.


In Honour of Black Friday – Big Brand Retailers Fight Quebec Language Law

CBC reports that a group of  well-known retailers, including  WALMART, COSTCO and BESTBUY, are taking the Quebec Government’s French language watchdog to Court over its recent requirement that all retailers have signs that include either a generic French name or add a slogan or explanation to reflect what they are selling.  For example, rather than featuring signage with just the well-known WALMART mark, the Quebec government wants that retailer’s signs to now read “Le Magasin WALMART” or something to that effect.

While Quebec’s French Language Charter requires the name of a business to be in French, until now this requirement hasn’t been applied to registered trademarks by the Office Québécois de la Langue Française (OQLF).  There has been some debate over the last few years about whether unregistered trademarks should be treated the same as registered trademarks in terms of this exemption.  The OQLF is now requiring all signs to include French language, whether or not registered or unregistered trademarks are involved.

For their part, the retailers (also including GAP, OLD NAVY and GUESS) argue that there has been no formal change to the applicable provision of the language law.  Further, they argue that the OQLF has no right to change the application of the existing law and that by changing its policy, it is in effect changing the law.  The retailers also point out that these are all famous brands and through extensive long term use they have come to identify the businesses behind them, such that no one in Quebec needs the assistance of the language law to know what these businesses sell or represent.

Some other popular brand owners, such as KFC or “Poulet Frit Kentucky” as it’s known in Quebec, have already opted to adopt Quebec specific branding, rather than carry on with an English business name.

A trial of this matter is unlikely to take place before the end of 2013.

The Big Reveal – ICANN Announces List of new gTLD applicants and applications

The Internet Corporation for Assigned Names and Numbers (ICANN) posted the list of new gTLD applicants and applications today.  ICANN received a total of 1,930 new gTLD applications.

Many companies such as Apple, Amazon, Google, Microsoft and Wal-Mart filed applications.  Among the Canadian applicants are Rogers (for .FIDO and .CHATR), Shaw Cablesystems (for Shaw) and the registrar Tucows (for .GROUP, .MARKETING, .MEDIA and .ONLINE).

The applications will now be evaluated by the expert panels selected by ICANN and the initial results are expected to be released in December 2012 or January 2013.  There will be a testing phase for the new domains that are approved and ICANN expects that new domains will not go live until mid-2013.

Today also marks the opening of a 60-day comment period, during which anyone may submit comments on any application for the evaluation panels to consider.  As well, if anyone believes they have grounds to formally object to an application, there is a seven month period during which they may file an objection.

Trade-mark and business owners should review the list of new gTLD applications to consider if they want to submit comments or file an objection during the period for doing so. 

Trade-mark owners should also monitor the status of the Trademark Clearinghouse services.  The Trademark Clearinghouse will serve as a repository for information regarding trademarks to be authenticated and validated by the service provider selected by ICANN – Deloitte Enterprise Risk Services.  All new gTLD registries will be required to use data from the Clearinghouse to ensure that trademark rights protection mechanisms are implemented during a new gTLD start-up period.

All in all, this marks a historic day for the domain name landscape and the beginning of some very interesting and challenging times.

About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

The Authors