Date: 20000627
Docket: T-1565-98
Ottawa, Ontario, this 27th day of June, 2000
| PRESENT: THE HONOURABLE MR. JUSTICE JOHN A. O"KEEFE |
BETWEEN:
CANADIAN COUNCIL OF PROFESSIONAL ENGINEERS
Applicant
- and -
APA - THE ENGINEERED WOOD ASSOCIATION
Respondent
REASONS FOR ORDER AND ORDER
O"KEEFE J.
[1] This matter involves an appeal of the decision of the Opposition Board of the Registrar of Trade-marks, rendered June 4, 1998, wherein the oppositions raised by the Canadian Council of Professional Engineers ("CCPE" or "appellant") to the registration of two proposed trade-marks of APA - The Engineered Wood Association ("APA" or "respondent") were rejected.
BACKGROUND
[2] On April 29, 1994, APA filed applications for the registration of two trade-marks, APA - THE ENGINEERED WOOD ASSOCIATION (Application Number 753,455) and THE ENGINEERED WOOD ASSOCIATION (Application Number 753,456). The applications were based on proposed use in Canada in association with the following wares:
| laminated wood products and wood included products used for structural purposes in building construction, namely glue lam beams, joists, trusses, laminated veneer lumber, plywood curved and flat, stress skin panels, plywood lumber beams, sandwich wood panels, foam filled plywood panels, parallel strand lumber and structural combinations utilizing such products |
and the following services:
| association services, namely promoting the common business interests of structural wood product designers and manufacturers, namely, promulgating product performance standards, conducting product and market research, advertising and publicizing product systems and applications and conducting seminars for buyers, users and specifiers of member"s products and dealer and distribution training. |
The right to the exclusive use of the words "ENGINEERED WOOD" with respect to the wares and "WOOD ASSOCIATION" with respect to the services was disclaimed. The application was advertised in the Canadian Trade-marks Journal for opposition purposes on September 18, 1996.
| [3] In response to this publication, CCPE filed a statement of opposition to the |
registration of the proposed marks with the Registrar of Trade-marks on November 13, 1996.
| [4] The CCPE claimed that the marks were not registrable on several grounds |
including the ownership of CCPE of various official trade-marks. CCPE is the owner of the following official trade-marks: ENGINEER; ENGINEERING; CONSULTING ENGINEER; ING.; CONSULTING ENGINEER; PROFESSIONAL ENGINEER; INGÉNIERIE; INGÉNIEUR; INGÉNIEUR CONSEIL; P. ENG.; GÉNIE. These marks were used by CCPE beginning in 1989.
| [5] The complete grounds of opposition raised by CCPE before the Registrar were as |
follows:
1. APA could not have been satisfied that it was entitled to use or register the proposed trade-marks.
2. The proposed trade-marks are not registrable by virtue of being clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares and services in association with which the trade-marks are proposed to be used.
3. The trade-marks are not distinctive, in that the proposed marks cannot function to distinguish the wares or services of APA from those of others.
4. The trade-marks are not registrable as they so closely resemble the opponent CCPE"s official marks so as to be likely to be mistaken therefor.
5. The trade-marks lead to the belief that they are produced under governmental approval or authority and thereby mislead the public.
6. The proposed trade-marks are not registrable by virtue of the fact that the word ENGINEERED has become associated with goods produced by a certain class of persons (registered professional engineers) and the use by the respondent would be likely to mislead the public, as APA are not professional engineers.
7. The trade-marks are deceptively misdescriptive of the conditions of or of the persons employed in the production of the wares and services and are thereby likely to mislead the public.
[6]By way of a counterstatement filed December 12, 1996, APA essentially denied
CCPE"s allegations.
DECISION OF THE TRADE-MARK OPPOSITION BOARD
[7]In a written decision rendered on June 4, 1998, the hearing officer of the
Opposition Board of the Registrar of Trade-marks rejected all the grounds of opposition raised by CCPE to APA"s proposed trade-marks.
[8]The hearing officer characterized CCPE"s first, second and seventh grounds of
opposition as alleging that the applied for trade-marks suggested involvement by registered professional engineers, which APA is not, and thereby allegedly lead to confusion and are misleading. The hearing officer held that "clearly descriptive" means "easy to understand". Therefore, the officer characterized CCPE to be claiming that the phrase THE ENGINEERED WOOD ASSOCIATION is to be easily understood to mean that professional engineers were involved in producing the wares and services. The hearing officer went on to state that:
The term THE ENGINEERED WOOD ASSOCIATION (taken in its entirety) may be highly suggestive of products made of engineered wood, and may possibly be clearly descriptive of an association which promotes the interests of manufacturers of engineered wood products . . . on a balance of probabilities, I find that the applicant has supported its case that the applied for mark is not in violation of paragraph 12(1)(b) of the Act insofar as alleged by the opponent. Of course, I am without jurisdiction to decide whether the applied for mark offends paragraph 12(1)(b) otherwise than as alleged in the state of opposition.
[9]As a result of this finding, the officer rejected the first, second and seventh
grounds of opposition.
[10]With respect to the fourth ground of opposition, that of a likelihood of confusion
of the proposed trade-marks for the CCPE"s official marks, the hearing officer determined that the test is restricted to resemblance between the opponent"s mark and the applied for mark. The hearing officer found that if the applied for mark is not identical to the opponent"s mark, the Board must consider whether the applicant"s mark so closely resembles the opponent"s so as to be likely to be mistaken therefor. Since none of the applied for marks was identical to the opponent"s mark, the hearing officer considered whether the applied for marks so closely resembled the opponents so as to be likely mistaken for them and determined that they were not.
[11]The hearing officer determined that the fifth ground of opposition was without
merit, as provincial requirements with respect to registration of professions could not be imported into federal law in the way in which CCPE sought.
[12]The hearing officer held that there was no evidence adduced in support of the
sixth ground of opposition and thereby rejected this ground of opposition.
[13]The third ground of opposition, that the applied for marks were not distinctive,
was not considered as the hearing officer held that it was merely repetitive of the second ground of opposition " that ground being that the marks were not registrable by virtue of being clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares and services in association with which the trade-marks are proposed to be used.
[14]As a result of the findings made, the hearing officer rejected the opposition to the
registration of the proposed trade-marks.
[15]This action was filed on August 4, 1998, within the statutory sixty day
limitation period for commencing appeals.
APPELLANT"S ARGUMENTS
[16]The appellant, CCPE, raises five issues on appeal. The Registrar of Trade-marks
is alleged to have erred in fact and in law by:
1. Finding that the third ground of opposition based on s.38(2)(d) "merely repeats the allegations of the second ground and does not stand independently".
2. Failing to consider and dispose of the third ground of opposition set out in paragraph 3(c) of the Statement of Opposition, based on s. 38(2)(d) of the Act, namely that the alleged trade-mark claimed in the application is not distinctive.
3. Rejecting the second and seventh grounds of opposition as set out in paragraphs 3(b) and (g) of the Statement of Opposition based upon ss.38(2)(b) and 12(1)(b) of the Act, namely that the subject trade-marks are clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares and services.
4. Finding that "he was without jurisdiction" to decide whether the applied for mark offends paragraph 12(1)(b) other than as alleged in the Statement of Opposition, when one of the grounds of opposition was based upon s.38(2)(b) and s.12(1)(b). Accordingly, the Registrar has the discretion to consider whether on the evidence, the subject trade-mark offends s.12(1)(b) of the Act.
5. Finding that the subject trade-marks do not so nearly resemble as to be likely to be mistaken for the Opponent"s official marks and rejecting the ground of opposition set out in paragraph 3(d) of the Statement of Opposition and based upon ss.38(2)(b), 12(1)(e) and 9(1)(n)(iii) of the Act.
[17]With respect to the first ground of appeal, the appellant argues that its second
ground of opposition was that the marks were not registrable due to their being deceptively misdescriptive of the persons employed in the production of the goods or services (in that the respondents are not professional engineers). The appellant argues that its third ground was that the marks were not distinctive and could not function to distinguish the respondent"s wares from the wares of others. Since non-registrability and non-distinctiveness are distinct areas, the Registrar ought to have disposed of each ground independently.
[18]With respect to the second ground, the appellant argues that the onus is on the
respondent to show that its trade-mark is distinctive. The appellant argues that since the proposed trade-marks retain their descriptive character, distinctiveness has not been established, and the marks are not adopted so as to distinguish the respondent"s wares from those of other parties. The appellant further argues that the term "APA" adds nothing to the distinctiveness of the proposed marks.
[19]With respect to the fourth ground, the appellant argues that the question of
whether the marks are deceptively misdescriptive should be considered and the Registrar ought not to have refrained from considering the question. The appellant argues that there exists a public interest in ensuring that improper trade-marks are not registered.
[20]With respect to the fifth ground, that the marks are unregistrable as they consist of
the appellant"s official marks or so nearly resemble the marks so as to be likely to be mistaken for them, the appellant argues that there are two separate and distinct tests: The "consisting of" test and the "resemblance" test. The appellant argues that the Registrar erred by either failing to consider the "consisting of" test, or misinterpreting "consisting of" as being synonymous with "identical to". From the Registrar"s decision:
If the applied for mark is not identical to the mark relied upon by the opponent, then the Board must consider whether the applicant"s trade-mark so nearly resembles as to be likely to be mistaken for one or more of the opponent"s marks.
Of course, the applicant"s mark is not identical to any of the opponent"s official marks. However, there is some resemblance between the marks in issue in view of the common component ENGINEER."
[21]The appellant cites dictionary definitions of "consisting" and "identical", noting
that there is no nexus. The appellant argues that if "consisting of" means "identical to", then the "resemblance" test is redundant, as the impugned mark would necessarily resemble the official mark, and that therefore, "consists of", should mean "forms a part of", enabling CCPE to argue that APA"s marks are not registrable on this basis.
RESPONDENT"S ARGUMENTS
[22]The respondent frames the issues on appeal as follows:
1. Whether the hearing officer erred in not considering the issue of
distinctiveness.
2. Whether the hearing officer erred in holding that the marks were not clearly descriptive or deceptively misdescriptive.
3. Whether the hearing officer erred in holding that the proposed trade-marks do not so nearly resemble the applicant"s marks so as to be mistaken for the applicant"s marks.
[23]The respondent argues that while the Court must come to its own conclusion in
the case, great weight must nonetheless be given to the decision of the Registrar and the appellant bears an onus of showing that the Registrar has gone wrong.
[24]The respondent submits that the Registrar is clearly limited to considering the
grounds of opposition that are set out in the statement of opposition and that this Court is limited to consideration of the issues raised before the Registrar. The respondent argues that the third ground of opposition merely paraphrases the definition of distinctive found in section 2 of the Act and that therefore, the Registrar was correct in dismissing the third ground of opposition.
[25]The respondent submits that the marks in their entirety cannot be considered to be
clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares or services in association with which registration is sought. The question is to be decided from the point of view of an everyday user of the wares and services.
[26]The respondent submits that, with respect to the section 9(1)(n)(iii) issue of
official marks, the test to be applied is restricted to an evaluation of the resemblance between the official marks and the proposed marks and that the Registrar properly applied the test and disposed of the matter according to law.
[27]The respondent submits that the marks are not so similar so as to be unregistrable
under subparagraph 12(1)(e) of the Act and that the position of the appellant is untenable and would remove the word "engineer", which is a common expression, from everyday usage. The respondent notes that there are numerous registered trade-marks containing the word "engineer" .
ANALYSIS
Standard of Review
[28]With respect to the standard of review, while the appellant argues that the
procedure before this Court will be effectively a trial de novo, the respondent relies on several cases holding that any decision of the Registrar is entitled to deference and should not be interfered with lightly. The case of Benson and Hedges Canada Ltd. v. St. Regis Tobacco Corp. [1969], S.C.R. 192, held that a decision of the Registrar should not be set aside lightly considering the expertise of the Registrar gained in being those who regularly make determinations under the Trade-marks Act. This case has been followed numerous times and is still considered good law: see McDonald"s Corp. v. Silicorp. Ltd. (1989), 24 C.P.R. (3d) 207 (F.C.T.D.).
[29]The case was also applied in the very recent case of Molson Breweries v. John
Labatt Limited, (February 3, 2000), Docket A-428-98. This case of the Federal Court of Appeal considered the proper standard of review for decisions of the Registrar in light of the recent decisions of the Supreme Court of Canada concerning standards of review of decisions of administrative tribunals. His Lordship Justice Rothstein cited a passage written by Justice Strayer from McDonald"s Corp., supra, as follows:
While different panels of the Federal Court of Appeal have variously expressed the duty of this Court on appeal to determine whether the Registrar has clearly erred or whether he has simply gone wrong it appears that it is the duty of a judge sitting on an appeal such as this to come to his own conclusion as to the correctness of the finding of the Registrar. In doing that he must, however, take into account the special experience and knowledge of the Registrar or the board, and more importantly have regard to whether new evidence has been put before him that was not before the board.
[30]Justice Rothstein speaking for the majority in Molson Breweries, supra, stated as
follows:
McDonald"s Corp. v. Silicorp. was a 1989 decision, well before the recent Supreme Court jurisprudence establishing the modern spectrum of standards of review namely correctness, reasonableness simpliciter and patent unreasonableness...Because Strayer J. was prepared to accord some deference to the Registrar, I do not consider his use of the term "correct" to reflect the non-differential and rigorous standard of review that is today associated with the terms "correct" or "correctness".
I think the approach in Benson and Hedges v. St. Regis and in McDonald v. Silicorp. are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, experience on the part of the Registrar has been recognized as requiring some deference having regard to the Registrar"s expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar"s finding of fact or they exercise his discretion, the Trial Division Judge must come to his or her own conclusion as to the correctness of the Registrar"s decision.
[31]The preceding ought to be taken as the current law with respect to review of
decisions of the Registrar of trade-marks, whatever the decision may be, provided that it is within the Registrar"s area of expertise. I note that Justice Rothstein articulated the same standard of review for all decisions of the Registrar, regardless of their characterization as either legal, factual, or discretionary.
[32]However, the filing of additional evidence on appeal to this Court is permitted
by subsection 56(5) of the Trade-marks Act:
| (5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar. |
(5) Lors de l'appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi. |
[33]The impact of additional evidentiary filings on the standard of review was
discussed in Molson, supra, at paragraph 51 when evidence which would have materially affected the decision of the Registrar, the trial judge sitting in review of the decision must come to his or her own conclusions.
[34]I consider that these comments are to be taken as indicating that provided that
there is significant new evidence filed on appeal, a trial de novo effectively results and the decision of the Registrar cannot be conservatively upheld in light of all this new evidence. Strictly speaking, even if a considerable volume of new evidence is filed on appeal, the appeal is not a trial de novo: as the evidence from the hearing before the Registrar is still before the Court. However, the term "trial de novo" has been used to describe the procedure when considerable new evidence is filed in the appeal.
[35]In the case at bar, the appellant, CCPE filed two affidavits on appeal (Quaile and
Zheng affidavits) and the respondent filed one affidavit (Pedro affidavit). Subsequently, the appellant filed the Cossette and Roberts affidavits in reply. The affidavits concern the usage of the term "engineered wood" as well as various trade-mark registrations concerning the subject. I am of the view that this evidence merely supplements the evidence that was before the Registrar.
[36]In cases such as this, the deference afforded to the decision of the Registrar under
appeal is maintained unless such deference must necessarily be displaced due to the additional evidence. The test is one of quality, not quantity. I note also that the appellant has raised no new arguments upon which it relies in opposing APA"s proposed trade-marks " its appeal concerns alleged errors in the method by which the Registrar conducted his inquiry and the interpretation of the law evidenced by the findings he made. It is, of course, non-sensical to uphold a decision which may well have been correct and reasonable on the basis of the material then before the decision maker, but is brought into question upon the filing of significant additional evidence or upon the raising of new issues.
[37]Equally non-sencial, however, would be for parties to be permitted to thwart the
balanced system of deference merely by adducing minor additional evidence before the Court, or even identical evidence in a different form from that which was before the original decision maker. I believe that the Court should undertake in such circumstances, to consider the differences of the evidence and the system of deference with the existing standard of review being displaced only to the extent that such displacement is necessary as a result of the additional filings.
[38]For example, if a party raises several grounds of appeal, one being distinctiveness,
and files additional evidence only dealing with distinctiveness (perhaps survey results or other data), the standard of review is displaced only in respect of the ground of appeal of distinctiveness. Such would only be logical in light of all the additional evidence. The Court cannot be expected to ignore this. It would seem also that it is only logical that if no or only minor, insignificant amounts of new evidence are adduced in respect of the other grounds, there is no de novo consideration of these grounds, and the Court must consider the arguments in light of the earlier decision of the Registrar and the fact that the decision of the Registrar will be subject to deference at the level of reasonableness simpliciter.
[39]Therefore, I will consider the argument"s raised by the appellant individually,
under the belief that the standard of review for the decision of the Registrar is reasonableness. I will take into account the additional evidence filed, however, I reiterate my belief that such filings only serve to supplement the evidence which was before the Registrar.
Preliminary Comment
[40]To begin, I note that CCPE both in its submissions before this Court and
before the Registrar, alleged that the proposed marks were unregistrable by virtue of being clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares and services. However, it appears as well that CCPE has information that the respondents are not professional engineers, such that its arguments were, at times, directed mainly at the complaint that the proposed marks were deceptively misdescriptive. As the evidence with respect to the nature of the respondent and the characteristics of those employed by it, was not significant in the case before me, I will consider the arguments of CCPE from both standpoints: purely descriptive and deceptively misdescriptive.
[41]Issue 1
Whether the Registrar erred in fact and in law in finding that the ground of opposition based on s.38(2)(d) "merely repeats the allegations of the second ground and does not stand independently".
[42]The Registrar was of the view that the appellant"s opposition based on alleged
non-distinctiveness of the proposed marks was repetitive of the opposition based on the ground that the marks were merely descriptive or deceptively misdescriptive of the persons employed in the production of the wares and services, pursuant to subparagraph 12(1)(b) of the Act.
[43]The available grounds of opposition to the registration of a proposed trade-mark
are listed in subsection 38(2) of the Act:
| (2) A statement of opposition may be based on any of the following grounds: (a) that the application does not conform to the requirements of section 30; (b) that the trade-mark is not registrable; (c) that the applicant is not the person entitled to registration of the trade-mark; or (d) that the trade-mark is not distinctive. |
(2) Cette opposition peut être fondée sur l'un des motifs suivants_: a) la demande ne satisfait pas aux exigences de l'article 30; b) la marque de commerce n'est pas enregistrable; c) le requérant n'est pas la personne ayant droit à l'enregistrement; d) la marque de commerce n'est pas distinctive. |
[44]From the statutory provision, it is clear that an opposition based on the allegation
that the mark is not registrable is separate and distinct from an opposition based on alleged non-distinctiveness.
[45]Subsection 12(1) of the Act enumerates the various conditions for registrability of
a trade-mark:
| 12. (1) Subject to section 13, a trade-mark is registrable if it is not (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years; (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
(c) the name in any language of any of the wares or services in connection with which it is used or proposed to be used; (d) confusing with a registered trade-mark; (e) a mark of which the adoption is prohibited by section 9 or 10; (f) a denomination the adoption of which is prohibited by section 10.1; (g) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a wine not originating in a territory indicated by the geographical indication; and (h) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication. |
12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants_: a) elle est constituée d'un mot n'étant principalement que le nom ou le nom de famille d'un particulier vivant ou qui est décédé dans les trente années précédentes; b) qu'elle soit sous forme graphique, écrite ou sonore, elle donne une description claire ou donne une description fausse et trompeuse, en langue française ou anglaise, de la nature ou de la qualité des marchandises ou services en liaison avec lesquels elle est employée, ou à l'égard desquels on projette de l'employer, ou des conditions de leur production, ou des personnes qui les produisent, ou du lieu d'origine de ces marchandises ou services; c) elle est constituée du nom, dans une langue, de l'une des marchandises ou de l'un des services à l'égard desquels elle est employée, ou à l'égard desquels on projette de l'employer; d) elle crée de la confusion avec une marque de commerce déposée; e) elle est une marque dont l'article 9 ou 10 interdit l'adoption; f) elle est une dénomination dont l'article 10.1 interdit l'adoption; g) elle est constituée, en tout ou en partie, d'une indication géographique protégée et elle doit être enregistrée en liaison avec un vin dont le lieu d'origine ne se trouve pas sur le territoire visé par l'indication; h) elle est constituée, en tout ou en partie, d'une indication géographique protégée et elle doit être enregistrée en liaison avec un spiritueux dont le lieu d'origine ne se trouve pas sur le territoire visé par l'indication. |
| [46] The appellant was specifically opposing the registration of the respondent"s marks |
on the basis that the marks were clearly descriptive or deceptively misdescriptive of the "persons employed in the wares and services"[sic]. From the wording of paragraph 12(1)(b) of the Act, a trade-mark is registrable if it is not clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares or services, conditions of the wares or services, or of the place of origin of the wares or services.
| [47] The distinctiveness of a proposed mark is evaluated upon a consideration |
of the definition provided by the Act, as well as the case law considering it:
| "distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them; |
"distinctive" Relativement à une marque de commerce, celle qui distingue véritablement les marchandises ou services en liaison avec lesquels elle est employée par son propriétaire, des marchandises ou services d'autres propriétaires, ou qui est adaptée à les distinguer ainsi. |
| [48] It is trite law that the hallmark of a trade-mark, given the requirement that it be |
distinctive, is the message that it sends to the public that the wares or services have one single source. If a trade-mark cannot function so as to indicate such a one single source, it is not registrable and is in fact no trade-mark at all. In the case at bar, the Registrar made no finding as to the distinctiveness of the proposed marks, as he was of the view that this ground merely alleged that the marks were purely descriptive or deceptively misdescriptive of the persons employed in the production of the wares or services.
| [49] While it may be true that a purely descriptive or a deceptively misdescriptive |
trade-mark is necessarily not distinctive, it is not correct to hold that merely because a mark is adjudged not to be either purely descriptive or deceptively misdescriptive, it is therefore distinctive. I am of the view that the Registrar erred in holding that the appellant"s third ground of opposition, that of non-distinctiveness, was merely repetitive of the second ground. The question of the distinctiveness of the proposed marks ought to have been considered independently. In articulating this aspect of the law, I can do no better than the appellant"s words at paragraph 27 of its Memorandum:
While distinctiveness is quite often determined as part of an evaluation of whether or not the proposed trade-mark is registrable by way of confusion with another trade-mark, it is possible to refuse an application for registration on the basis of non-distinctiveness independent of the issue of confusion or any other grounds of opposition, provided the ground is raised in opposition.
| [50] As stated infra, the Registrar ought to have considered the distinctiveness |
argument independently. As he did not consider it at all, I shall do so.
| [51] I am of the view that the proposed trade-mark "APA - THE ENGINEERED |
WOOD ASSOCIATION" is distinctive and can function so as to distinguish the wares of the respondent from those of others. The beginning word of the mark, "APA", is apparently an acronym for "American Plywood Association". This acronym at the beginning of the mark can function to distinguish the wares and services of the respondent from those of others. I do not consider the fact that the remainder of the mark purports to set up the respondent as "The" association for the provision of the services in question to be a bar to registrability nor an indicia of non-distinctiveness.
| [52] By making this finding, I must, of course, be taken to be disagreeing with the |
submissions made by the appellant at paragraph 42 of its memorandum:
Not only do the initials "APA" add nothing to the distinctiveness of the mark, the word "apa" is also descriptive, as can be seen in the following definitions:
apa, n. a tree, Eperua falcata, of tropical America, having reddish-brown wood used in the construction of houses.
APA, 1. American Psychological Association, 2. American Psychiatric Association.
A.P.A., 1. American Philological Association, 2. American Protective Association, 3. American Protestant Association, 4. American Psychological Association, 5. American Psychiatric Association, 6. Associate in Public Administration.
| [53] With respect to the proposed mark "THE ENGINEERED WOOD |
ASSOCIATION" however, I must conclude that the proposed mark is not distinctive and therefore allow the opposition raised by the appellant to this proposed mark. Taken in its totality, this mark is a very generic expression which could be applied to any organization which provided similar wares and services. This mark cannot function to distinguish the wares or services of the respondent from those of others providing similar wares or services:
What is used as a trade-mark is required to be distinctive of the particular wares or services made, sold or performed in association with the mark in order to distinguish them from the wares or services of others and to identify them with a particular trader. If it is applicable to the general description of all wares or services of that class by whomsoever made and sold, the mark is not distinctive but descriptive and hence is not entitled to protection as a trade-mark.
(H. Fox, The Canadian Law of Trade-marks and Unfair Competition, 3rd ed., (Toronto, Carswell, 1956)).
| [54] Issue 2 |
| Whether the Registrar erred in fact and law in rejecting the second and |
seventh grounds of opposition as set out in paragraphs 3(b) and (g) of the Statement of Opposition based upon ss.38(2)(b) and 12(1)(b) of the Act, namely that the subject trade-marks are clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares and services.
| [55] The appellant argued that the proposed trade-marks were clearly descriptive or |
deceptively misdescriptive of the persons employed in the production of the wares or services.
| [56] The appellant has cited a large number of cases in an effort to show that the |
proposed marks are unregistrable by virtue of being clearly descriptive or deceptively misdescriptive as well as non-distinctive. However, none of the cases closely matches the circumstances of the case at bar. The various cases cited, in which the current appellant, CCPE was a party, all relate to the noun "ENGINEER":
| CCPE v. Krebs Engineers (1996), 69 C.P.R. (3d) 267 (T.M.O.B.) registration of KREBS ENGINEERS refused; section 12(1)(b) . . . clearly descriptive or deceptively misdescriptive of persons employed in the production of wares or services. |
| Lubrication Engineers Inc. v. CCPE (1992), 41 C.P.R. (3d) 243 (F.C.A.) |
| registration of LUBRICATION ENGINEERS refused; section 12(1)(b) grounds. |
| [57] I note that in the case at bar, the impugned term ENGINEERED functions as a |
verb (past participle) and refers to a process that has been performed on an article (wood). It does not represent the noun "engineer" - it is a verb and a past participle of the verb no less. I therefore, am of the view that the claim by the appellant that the proposed mark is deceptively misdescriptive of the persons engaged in the production of the goods and services is without merit. The proposed trade-mark is not THE WOOD ENGINEER"S ASSOCIATION.
| [58] It is also my view that none of the arguments raised by the appellant concerning |
the public"s perception of the word "ENGINEER" or prohibitions against the use of the term or title "ENGINEER", unless one is in fact a registered professional engineer, have any merit given these above circumstances.
| [59] Issue 3 |
| Whether the Registrar erred in fact and law in finding that "he was without |
jurisdiction" to decide whether the applied for mark offends paragraph 12(1)(b) other than as alleged in the Statement of Opposition, when one of the grounds of opposition was based upon s. 38(2)(b) and s. 12(1)(b). Accordingly, the Registrar has the discretion to consider whether, on the evidence, the subject trade-mark offends s. 12(1)(b) of the Act.
| [60] The case law with respect to the jurisdiction of the Registrar to entertain |
arguments not contained in the statement of opposition is somewhat equivocal. In Piattelli v. A. Gold & Sons Ltd. (1991), 35 C.P.R. (3d) 377 (F.C.T.D.), the Court held that it was bound to consider a new ground of non-registrability that was raised at trial. But in Imperial Development Ltd. v. Imperial Oil Limited (1984), 79 C.P.R. (2d) 12 (F.C.T.D.), the Court overturned the finding of the Registrar as he had dealt with an issue that was not addressed within the statement of opposition.
| [61] However, the circumstances of the case at bar differ from both of the above-cited |
cases: The Registrar did not consider a ground of opposition not addressed by the opponent (appellant), nor did the opponent raise any new ground of opposition in the appeal in this Court. Apparently, the basis for this issue being raised before me is the belief that since the Registrar stated that the term "THE ENGINEERED WOOD ASSOCIATION" may be clearly descriptive of an association which promotes the interests of producers in this industry (see para 8 infra ), the Registrar would have allowed the opposition on this basis, had he not concluded that he was without jurisdiction to consider a ground of opposition other than as set out in the statement of opposition. The opponent had only opposed the registration on the basis that the proposed marks were clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares or services.
| [62] I believe it will suffice to say that the fact that "THE ENGINEERED WOOD |
ASSOCIATION" may clearly describe an association which promotes the interests of producers in the industry, such does not give rise to a ground of non-registrability under paragraph 12(1)(b) of the Act. To be unregistrable, the proposed mark must clearly describe the services offered ("dry cleaning", "marketing", "consulting services", "association services"), and this the respondent"s proposed marks do not.
| [63] I am, however, also of the view that the Registrar must not unduly limit his |
inquiry upon opposition proceedings. The appellant in the case at bar had placed registrability under paragraph 12(1)(b) squarely in issue in its statement of opposition. It would not be reasonable for the Registrar to allow what he apprehends to be an unregistrable mark to be registered, merely because the narrow grounds for non-registrability under paragraph 12(1)(b) advanced by the opponent were not successful. Having said that, such broadened inquiry must consider the extent to which the applicant for registration would be prejudiced by such actions, and its right to have notice of the grounds of opposition, so that it may effectively exercise its rights to make submissions in the form of a counterstatement.
| [64] Issue 4 |
The Registrar erred in fact and in law in finding that the subject trade-marks do not so nearly resemble as to be likely to be mistaken fro the Opponent"s offical marks and rejecting the ground of opposition set out in paragraph 3(d) of the Statement of Opposition and based upon ss.38(2)(b), 12(1)(e) and 9(1)(n)(iii) Of the Act.
| [65] The following sections of the Act are relevant to this issue: |
| 12. (1) Subject to section 13, a trade-mark is registrable if it is not . . . (e) a mark of which the adoption is prohibited by section 9 or 10; |
12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants_: . . . e) elle est une marque dont l'article 9 ou 10 interdit l'adoption; |
| 9. (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, (d) any word or symbol likely to lead to the belief that the wares or services in association with which it is used have received, or are produced, sold or performed under, royal, vice-regal or governmental patronage, approval or authority; (n) any badge, crest, emblem or mark (i) adopted or used by any of Her Majesty's Forces as defined in the National Defence Act, (ii) of any university, or (iii) adopted and used by any public authority, in Canada as an official mark for wares or services, in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use; |
| 9. (1) Nul ne peut adopter à l'égard d'une entreprise, comme marque de commerce ou autrement, une marque composée de ce qui suit, ou dont la ressemblance est telle qu'on pourrait vraisemblablement la confondre avec ce qui suit_: d) un mot ou symbole susceptible de porter à croire que les marchandises ou services en liaison avec lesquels il est employé ont reçu l'approbation royale, vice-royale ou gouvernementale, ou sont produits, vendus ou exécutés sous le patronage ou sur l'autorité royale, vice-royale ou gouvernementale; n) tout insigne, écusson, marque ou emblème_: (i) adopté ou employé par l'une des forces de Sa Majesté telles que les définit la Loi sur la défense nationale, (ii) d'une université, (iii) adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou services, à l'égard duquel le registraire, sur la demande de Sa Majesté ou de l'université ou autorité publique, selon le cas, a donné un avis public d'adoption et emploi; |
| [66] The appellant has argued that since the word "ENGINEERED" reproduces its |
official mark, "ENGINEER" in its entirety, with the addition of the suffix "ED", the respondent"s proposed marks "consist of" its official mark and are therefore unregistrable on this basis. I cannot agree.
| [67] The ambit of the protection given to official marks adopted by a public authority |
was considered in Allied Corporation v. Canadian Olympic Association, [1990] 1 F.C. 769 (C.A.). Speaking for the Court, MacGuigan J.A. interpreted the provisions concerning official marks more narrowly than had the trial judge: (1987), 16 C.P.R. (3d) 80. His Lordship specifically noted that the provisions render a previously used, yet unregistered mark, forever unregistrable upon the adoption of the mark or a similar mark by a public authority as an official mark. Therefore, even if the mark was used first by the other party, the adoption by the public authority trumps the rights of the other party to the registration of the mark. It was also noted in Allied, supra, that official marks are not subject to expungement.
| [68] I note a further protection enjoyed by official marks adopted by a public authority: |
they are apparently registrable notwithstanding the fact that they may be confusing with pre-existing registered marks. Conversely, a mark subsequently sought to be registered or used could not be, due to the existence of the official mark, notwithstanding the fact that there may be no possibility of confusion between the two marks within the meaning of section 6 of the Act (i.e. very different wares, characteristics). The wares or services in association with which the mark is sought to be used may be completely different, sold to completely different consumers, in completely different settings, through a completely different marketing and distribution system. Nonetheless, the mark cannot be adopted or registered in the face of the existence of an official mark.
| [69] Having outlined the protection official marks enjoy, based on the provisions of the |
Act, it must be determined what the scope of prohibited marks is: The meaning of "consists of" most specifically. As a result of the foregoing, which clearly shows the privileged position official marks enjoy, I reject the interpretation of subparagraph 9(1)(n)(iii) proffered by the appellant and declare that the interpretation advanced by the Registrar is correct. In order to offend subparagraph 9(1)(n)(iii) so as to be unregistrable under paragraph 12(1)(e), the proposed mark must either be identical to the official mark or so nearly resemble it so as to be likely to be mistaken for it. The words "consists of" in the subsection of the Act are to be interpreted to mean "identical to" as was apparently held by the Registrar.
| [70] This interpretation maintains the great ambit of protection afforded to official |
marks, but stops short of conferring an absurdly great ambit of protection for official marks which Parliament cannot reasonably be taken to have contemplated. It is inconceivable that Parliament intended to give such wide ambit of protection to official marks through the enactment of section 9 of the Act. Were the proposition of the appellant correct and any mark that contained, in some form, the official mark could not subsequently be adopted and would be unregistrable, it would be the case that the use of "ING." would be prohibited. Consider that no one could use the term "shopping .com", or any other mark ending in "ING", followed by ".com". It is not reasonable to state that such marks are prohibited. Such is a logical extension of the appellant"s argument and results in an unreasonably vast monopoly and scope of protection. Such is not the intent of the protection for official marks.
| [71] The interpretation I have adopted allows the wide ambit of protection to official |
marks which I believe is consistent with the scheme of the Act as a whole, related sections of the Act, as well as the intention of Parliament. No one may register or use a trade-mark "ENGINEER" (or another of the official marks) in association with any ware or service, notwithstanding the fact that such a possible trade-mark may not be confusing with the appellant"s marks. And no one may register or use a trade-mark which is similar to the appellant"s official marks so that it is likely to be mistaken for them, again notwithstanding that the mark may be sought to be used in association with such wares or services that it may well not be held to be "confusing" with the official marks as that term is used in section 6 of the Act. "Mistaken therefor" and "confusing with" are not synonymous.
Conclusion
| [72] The appeal is allowed in respect of Application Number 753,456, "THE |
ENGINEERED WOOD ASSOCIATION" on the basis that the proposed trade-mark is not distinctive. All other grounds advanced in respect of that proposed trade-mark are dismissed.
| [73] The appeal is dismissed in its entirety in respect of Application Number 753,455, |
"APA - THE ENGINEERED WOOD ASSOCIATION".
| [74] As success was divided, the parties shall bear their own costs. |
ORDER
| [75] IT IS ORDERED that the appeal is allowed in respect of Application Number |
753,456, "THE ENGINEERED WOOD ASSOCIATION".
| [76] IT IS FURTHER ORDERED that the appeal is dismissed in its entirety in |
respect of Application Number 753,455, "APA - THE ENGINEERED WOOD ASSOCIATION".
| [77] IT IS FURTHER ORDERED that as success was divided, the parties shall bear |
their own costs.
"John A. O"Keefe"
J.F.C.C.
Ottawa, Ontario
June 27, 2000