Teachers Get Schooled In Trademarks – Again

In a previous post, we reported on a Federal Court of Canada decision, upholding the decision of the Registrar of Trademarks to refuse registration of the mark TEACHERS in association with services described as “administration of a pension plan, management and investment of a pension for teachers in Ontario”. Undaunted, the Ontario Teachers’ Pension Plan Board decided to appeal that decision to the Federal Court of Appeal.

The Federal Court of Appeal has now issued its own decision in this matter, upholding the lower Court’s ruling and again refusing registration, on the basis that the mark is clearly descriptive of the character of the claimed services. In dismissing the Applicant’s arguments on Appeal, the Court of Appeal found that “the word TEACHERS’, which clearly describes those whose pension plan the appellant administers and in whose benefit the management and investment services of the pension fund are rendered, describes a highly prominent feature, trait or characteristic belonging to the appellant’s services.”

It remains to be seen whether the Applicant has learned its lesson or will seek leave to appeal to the Supreme Court of Canada.

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Neil Melliship

Neil Melliship is a Partner and co-chair of the Intellectual Property and Information Technology practice groups at the Vancouver-based Canadian law firm of Clark Wilson LLP. Neil is a lawyer and a registered Canadian Trademark Agent, who actively speaks and writes on trademark and other IP issues including those relating to the Internet, domain name disputes and e-commerce. Neil is consistently rated as a Leading Trademark Practitioner—Individuals: Prosecution and Strategy, by the World Trademark Review (WTR) 1000. Neil is also listed in the Canadian Legal Lexpert Directory as Rated Repeatedly Recommended in the area of Intellectual Property. He has also been repeatedly named by Best Lawyers in Canada in the categories of Intellectual Property Law, Technology Law and Information Technology Law.