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.

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Trademark Interlocutory Injunction Denied

A recent decision of the Saskatchewan Court of Appeal, setting aside the interlocutory injunction granted by the Chambers judge, illustrates how difficult it is to obtain an interlocutory injunction absent convincing evidence that satisfies the three part test for an interlocutory injunction.  In Kulyk v. Wildman (Weight Loss Forever Consulting), the Saskatchewan Court of Queen’s Bench granted the plaintiff an interlocutory injunction precluding the defendant from using or carrying on business under the plaintiff’s alleged business name and trademark, “Global Healthcare Connections” and directing the defendant to remove all references to the plaintiff’s mark on social media sources.  In assessing the plaintiff’s application, the Chambers judge looked to Potash Corp. of Saskatchewan Inc. v. Mosaic Potash Esterhazy Limited Partnership which set out the well‑established test for an interlocutory injunction:  

(1) the strength of the plaintiff’s case;

(2) the presence of a meaningful risk of irreparable harm if the injunction is not granted; and,

(3) whether the balance of convenience favours the granting of the injunction. 

The Court of Appeal allowed the appeal and held that the plaintiff’s application for injunctive relief was based on the common law tort of passing off, which in turn, required evidence of goodwill, deception of the public due to misrepresentation, and actual or potential damage to the plaintiff.  The Court stated that the plaintiff’s case was weak because she failed to put forth any evidence to establish the existence of goodwill associated with the name Global Healthcare Connections.  The plaintiff’s affidavit referred to various steps she had taken to launch her business, but it also stated that she had had difficulty launching her business because of the defendant’s actions.  Thus, there was no evidence that the plaintiff or her services were known in the market.

The Court found it unnecessary to assess the remaining elements of the common law tort, although it did comment on these.  With respect to the element of irreparable harm, the Court disagreed with the Chambers judge’s finding that the plaintiff had suffered loss of business, finding instead, that the similarity between the names used by the parties would likely result in a benefit rather than harm to the plaintiff’s business.  Noting that a balance of convenience analysis could be “compendious”, the Court was satisfied that the balance of convenience also favoured the defendant, given the weakness of the plaintiff’s case and given that irreparable harm favoured the defendant.  Thus, the Chambers judge’s decision could not stand.

Declaring Control in Expungement Proceedings

In De Grandpré Chait v. Mead Products LLC, the Trademarks Opposition Board (the “Board”) maintained the registration for YEAR-IN-A-BOX (the “Mark”), which is registered for use in association with calendars. At issue was whether the registrant, MeadWestvaco (the “Registrant”), had demonstrated sufficient control over the entity selling the calendars in Canada in association with the Mark so as to maintain the registration of the Mark on the Canadian Trademarks Register. Importantly, Section 50(1) of the Trade-marks Act  states that if a trademark owner licenses the trademark for use by another entity and the owner has, under the license, direct or indirect control of the character or quality of the wares or services being provided by such entity in association with the licensed trademark, then the use of the trademark has the same effect as if used by the trademark owner itself.

In affidavit evidence accepted by the Board, the calendars associated with the Mark were manufactured in the United States by MWV Consumer & Office Products, a division of the Registrant. The calendars were then sent to Hilroy, a division of MeadWestvaco Canada LP, which sold the calendars to Canadian retailers. The Registrant’s affidavit evidence stated that MWV Consumer & Office Products, Hilroy and MeadWestvaco Canada LP were authorized to use the Mark pursuant to licenses under the terms of which the Registrant controlled the nature and quality of the calendars associated with the Mark. Importantly, the Registrant did not provide evidence detailing those terms of the license agreements which demonstrated control between the licensor and licensee. The party requesting expungement took the position that this evidence needed to be adduced so as to demonstrate sufficient control to satisfy Section 50(1). However, the Board held that it is possible to satisfy Section 50(1) of the Act by way of a declaration in which the owner or license holder simply attests to the fact that the control required by Section 50(1) indeed exists.

This owner-control scenario is a common one that faces many foreign owners of Canadian trademark registrations that are seeking to maintain marks on the Canadian Trademarks Register during an expungement proceeding. This decision highlights the importance of ensuring that control is demonstrated either by way of a declaration to such effect or, better yet, by filing evidence which includes a written license agreement detailing adequate control provisions.