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. 

On judicial review, the Council sought to establish that the College was not a public authority, that it had not “adopted” its official marks and that section 9(1)(n)(iii) was contrary to the division of powers scheme in the Constitution, as well as freedom of expression.  As explained by the Court, notice of an official mark means that others are prohibited from adopting, in association with a business, a mark that resembles the official mark and may be mistaken for it.  It is also not necessary for a public authority to demonstrate the distinctiveness of a proposed official mark or any secondary meaning, and there is no requirement that public notice be given of a request to the Registrar.  Following an earlier decision, Ontario Association of Architects v. Association of Architectural Technologists of Ontario the Court concluded that the College was a “public authority” given that the requisite governmental control was evident.  With regards to adoption and use, the court noted that these terms were broad in scope and for purposes of section 9,  a mark is adopted and used if it is displayed in association with services, even if the mark is not distinctive or clearly descriptive.  The marks at issue had been displayed on a publicly accessible website before the date of public notice and whether the College had displayed the marks merely to support its application to the Registrar was not relevant. 

With regards to the constitutional issues, the Court was not prepared to read down the provisions of the Trade-marks Act on the basis that provincial responsibility regarding the regulation of professions is infringed if the federal government is able to provide for the protection of official marks relevant to professions.  The Court was not convinced that provincial powers were in any way infringed and noted that the federal legislation, while it overlapped with provincial jurisdiction, reinforced the provincial powers, since self-governing professions, by obtaining official marks, were able to ensure that professional designations did not become articles of commerce.  Professional titles generally cannot be registered as trademarks, not because regulation of a profession is within provincial jurisdiction, but because they are descriptive or non-distinctive, tests that are not relevant when considering official marks.  With regards to freedom of expression, section 9(1)(n)(iii) infringed section 2(b) of the Charter, but it was justified as a reasonable limit prescribed by law given the College’s need to prevent confusion between government and private services and the need to prevent persons from capitalizing upon or misusing public symbols and marks.

 Thus, the private entity, the Council, was not entitled to trademarks such as D.C.T.M (DOCTOR OF TRADITIONAL CHINESE MEDICINE) and REGISTERED D.P.C.M, but the College is entitled to its official marks, thereby allowing the College greater control over the use of professional designations.

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