Date:
20130723
Docket: T-789-12
Citation: 2013
FC 801
Toronto, Ontario,
July 23, 2013
PRESENT: The
Honourable Mr. Justice Hughes
BETWEEN:
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CONTINENTAL TEVES AG & CO.
OHG
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Applicant
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and
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CANADIAN COUNCIL OF PROFESIONAL
ENGINEERS
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Respondent
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REASONS FOR
JUDGMENT AND JUDGMENT
[1]
This
is an appeal from a decision of a Hearing Officer of the Trade-marks Opposition
Board dated January 23, 2012 (cited as 2012 TMOB18) respecting Application No.
1,361,599 wherein registration of the words ENGINEERING EXCELLENCE IS OUR
HERITAGE for “brake pads for land vehicles, brake rotors for land vehicles” was
refused. For the reasons that follow I find that the appeal is dismissed.
THE APPLICATION
[2]
A
corporation located in the United States of America, Continental Teves Inc., filed
an application with the Canadian Trade-marks Office on August 29, 2007 to
register the words ENGINEERING EXCELLENCE IS OUR HERITAGE for use as a
trade-mark in Canada in association with wares described as “brake pads for
land vehicles, brake rotors for land vehicles.”
[3]
The
application was based on use in Canada by that corporation since at least as
early as January 31, 2007 and claimed priority from an application filed in the
United States of America by that corporation on March 1, 2007.
[4]
The
application was assigned by that US corporation to the Applicant in this appeal,
Continental Teves AG & Co. oHG, by a document signed by the US corporation on February 9, 2009; and by the Applicant on August 8, 2008. The assignment
stated that it was nunc pro tunc effective as of March 1, 2007, which
was the date of filing the US application; hence, the Canadian priority date.
THE OPPOSTION
[5]
The
Respondent Canadian Council of Professional Engineers (CCPE) filed an Opposition
to the registration of this trade-mark on May 30, 2008. A number of grounds were
stated, some of which the Opponents’ solicitors, by a letter dated May 11,
2012, have been withdrawn. The principal grounds upon which the Member made the
decision under appeal, and remain before this Court for consideration, are
those as set out in paragraphs 10. (c) and (f) of the Statement of Opposition
which are as follows:
10.
(c) The Opponent bases its opposition on the ground set out
in s.38(2)(b) and 12(1)(b), namely that the trade- mark
is not registrable in view of the facts set out in paragraphs
3-9 above. In particular, the trade-mark is not registrable
because, as set out in s. 12(1)(b), it is clearly
descriptive or deceptively misdescriptive of the
character or quality of the wares in association with
which it is used or proposed to be used, or of the persons employed in the
production of the wares. Without limiting the
generality of the foregoing, in view of the fact
that the applied-for trade-mark includes the
term “engineering”, which is regulated in Canada, it follows that:
i.
if members of the profession of engineering in Canada
are involved in the production of the wares, the
applied-for mark is clearly descriptive of both the character
and quality of the wares and of the persons
employed in their production;
ii. if
members of the profession of engineering in Canada
are not involved in the production of the wares,
then the applied-for mark is deceptively misdescriptive
of both the character and quality of the wares
and of the persons employed in their production.
…
(f)
The Opponent bases its opposition on the ground set out in s. 38(2)(d),
namely that the trade-mark is not distinctive. The trade-mark is not
distinctive as defined in s.2 of the Act, in that it fails to
distinguish the Applicant’s wares from the wares of others
including other engineers in general which are licensed to practise
engineering in Canada. In addition, any use by the Applicant of the applied-for
mark would be misleading, in that such use would suggest that the
wares of the Applicant are provided, sold, leased, or licensed by the Opponent
or its constituent members or that the Applicant is associated with, or
authorized by the Opponent or its constituent members listed in paragraph 3
above.
[6]
The
Opponent filed as its evidence three affidavits of John Kizas, Manager,
Strategic Development of the CCPE; the first was sworn March 13, 2009; the
second was a reply affidavit sworn August 7, 2009; the third was a
supplementary affidavit sworn October 8, 2009. Among other things, Kizas
attested as to the use of the word ENGINEERING in Canada and various pieces of
legislation respecting the use of that word. The Opponent also filed the
affidavit of D. Jill Roberts, an assistant bailiff with a bailiff company in
Ottawa. She attached exhibits of documents copied from public sources such as
libraries and the internet respecting words such as ENGINEERING.
[7]
The
Applicant filed the affidavit of Joanne P. Gort, an associate with the office
of the Applicant’s solicitors in these proceedings. She filed as exhibits
copies of various dictionary definitions of words such as ENGINEERING, and
various internet locations where such words could be found.
[8]
There
was no cross-examination upon any of the affidavits filed in the Opposition.
THE DECISION UNDER REVIEW
[9]
The
decision under review was lengthy and reviewed in detail much of the evidence
and argument of the parties put before the Board. As I will be referring to
parts of this decision subsequently in these Reasons, I will not set out the
decision at length here. It may be found on the web at: cipo.ic.gc.ca – TMOB
Decisions- cited as 2012 TMOB 18, dated 2012-01-23.
[10]
The
Hearing Officer refused the application. The Officer found, at paragraph 44,
that the mark cannot be found to be clearly descriptive of the persons employed
in the production of the wares in question; brake pads and rotors. The Officer
found, at paragraphs 45 to 50 that the mark was deceptively misdescriptive of
the persons employed in the production of the wares. At paragraph 53, the
Hearing Officer found that as of the material date, the filing date of the
Opposition, May 30, 2008, the mark was not adapted to distinguish, nor did it
actually distinguish the wares of the Applicant from those of others within the
meaning of section 2 of the Trade-marks Act. The Officer held that it
was unnecessary to address whether the words in the mark are in common use by
others.
[11]
In
brief, the Officer held that the mark was unregistrable because it was
deceptively misdescriptive and did not distinguish the Applicant’s wares from
those of others.
NEW EVIDENCE ON APPEAL
[12]
The
somewhat unusual provisions of section 56(5) of the Trade-marks Act provide
that on an appeal such as this one, either party may file evidence in addition
to that filed in the Opposition proceedings.
[13]
In
this case, the Respondent CCPE filed an affidavit of Jennifer Allen, an
employee in its solicitor’s office, attaching a letter simply stating that the
Respondent will not be relying on certain grounds set out in the Statement of
Opposition. Those grounds were not dealt with by the Hearing Officer (paragraph
55 of the decision) and were not argued in this Court.
[14]
The
Applicant, Continental Teves AG & Co. oHG, filed an affidavit of Dr. Thomas
Eller, its Executive Vice President, Sales and Key Account Management. It
served to incorporate by reference an exhibit setting out some of the history
of that organization. The affidavit states, inter alia:
•
that
organization is a “world leader” in the design and manufacture of brakes, brake
pads and brake rotors for land vehicles and has over a hundred years of global
expertise in automotive engineering (paragraph 2);
•
that
organization is well known for its involvement within the field of engineering
and has received awards for excellence in engineering (paragraph 3);
•
that
organization employs over 1,000 engineers in Germany and over 2,000 engineers
in its facilities around the world.
[15]
What
that affidavit does not say is what, if any, of this activity has taken place
in Canada and how many, if any, engineers are employed in Canada. None of the
specific examples provided in the exhibits relate to Canada. I infer, and
Counsel for the Applicant acknowledged that it would be appropriate to do so,
that if any significant activity had occurred in Canada, Eller would have said
so. There was no cross-examination upon this affidavit.
STANDARD OF REVIEW
[16]
It
is well-accepted law, and agreed to by the parties that, given that this is an
appeal - not a judicial review - but an appeal upon which new evidence can be, and
in this case has been filed, that I must review the Hearing Officer’s decision
on a basis of reasonableness where it deals with the evidence before the Board;
and correctness, where it deals with matters of law. Where the new evidence
would likely have had an effect on the Hearing Officer’s decision, I am to deal
with the matter de novo. I repeat what I recently wrote at paragraph 18
of Cheah v McDonald’s Corporation, 2013 FC 774:
[18]
The standard of review of a Member’s decision in Opposition proceedings is well
known. I accept the Reasons of Justice Phelan of this Court in his decision in
the recent case of San Miguel Brewing International Limited v Molson Canada
2005, 2013 FC 156, at paragraphs 22 to 24:
22
The standard of review is affected by the type of new evidence (if any) filed
on the appeal in accordance with s 56(5) of the Trade-marks Act. In the absence
of new evidence, the standard of review is reasonableness (Groupe Procycle Inc
v Chrysler Group LLC, 2010 FC 918, 377 FTR 17).
23
However, where new evidence is filed, it will cause the standard of review to
be correctness where that new evidence is substantial and significant. Mere
regurgitation or supplements of prior evidence would generally be insufficient
to alter the standard of review (Vivat Holdings Ltd v Levi Strauss & Co,
2005 FC 707 at para 27, 276 FTR 40).
24
As summarized by K Gill and R S Jolliffe in Fox on Canadian Law of Trade-marks
and Unfair Competition, 4th ed, loose-leaf, (Toronto: Thomson Carswell, 2002),
at 6-48 [Fox]: "[t]he mere filing of new evidence on appeal does not
necessarily lower the standard of appeal to one of correctness. The quality of
the new evidence must be considered. The question is to the extent to which the
additional evidence has a probative significance that extends beyond the
material that was before the Board."
Fox goes on to write: "[w]here the new evidence adds nothing of
significance and is merely repetitive of existing evidence without enhancing
its cogency, the standard of review will be whether the Registrar's decision
was clearly wrong. In such cases, the presence of the newly filed evidence will
not affect the standard of review applied by the Court on the appeal."
I
accept those statements as reflective of the law in Canada.
ISSUES ON APPEAL
[17]
Given
the additional evidence and appropriate standard of review, the issues for
determination on this appeal are:
1.
Did
the Hearing Officer err in finding that the mark was not clearly distinctive
based on section 12(1)(b) of the Trade-marks Act?
2.
Did
the Hearing Officer err in finding that the mark was deceptively misdescriptive
based on section 12(1)(b) of the Trade-marks Act?
3.
Did
the Hearing Officer err in finding that the mark was not distinctive of the
wares of the Applicant based on section 2 “distinctive” and subsection 38(2)(d)
of the Trade-marks Act?
ONUS
[18]
In
considering the above issues, two separate onuses must be kept in mind. They
are correctly recited at paragraph 8 of the Hearing Officer’s reasons; namely,
that the Applicant bears the legal onus of establishing, on a balance of
probabilities, that its application complies with the requirements of the Trade-marks
Act; the other is that the Opponent bears the initial evidential burden to
adduce sufficient admissible evidence from which it could be reasonably
concluded that the facts alleged to support each ground of opposition exist:
[8]
The Applicant bears the legal onus of establishing, on a balance of
probabilities, that its application complies with the requirements of the Act.
However, there is an initial evidential burden on the Opponent to adduce
sufficient admissible evidence from which it could reasonably be concluded that
the facts alleged to support each ground of opposition exist [see John Labatt
Ltd v. Molson Companies Ltd. reflex, (1990), 30 C.P.R. (3d) 293 (F.C.T.D.); and
Dion Neckwear Ltd. v. Christian Dior, S.A. et al. 2002 FCA 29 (CanLII), (2002),
20 C.P.R. (4th) 155 (F.C.A.)]. The presence of an onus on the Applicant means
that if a determinate conclusion cannot be reached once all the evidence is in,
then the issue must be decided against the Applicant [see John Labatt, supra].
Summary
of the parties’ evidence
The
Opponent’s evidence
The
Kizas affidavits
RELEVANT DATES
[19]
The
jurisprudence has established somewhat of a maze as to the relevant dates upon
which various grounds of registrability of a mark are to be considered. In this
case, the Hearing Officer correctly set out and applied those dates:
•
for
considering whether the mark is “clearly descriptive” or “deceptively
misdescriptive” of the wares having regard to section 12(1)(b) of the Trade-marks
Act, the relevant date is the filing date of the application; here August
29, 2007 (paragraph 33);
•
for
considering whether the mark is distinctive, the relevant date is the filing
date of the Statement of Opposition; here May 30, 2008 (paragraph 52).
[20]
This
has not been disputed by the parties.
THE EVIDENCE THAT WE HAVE AND DO
NOT HAVE
[21]
Through
the evidence of Kizas, filed in the Opposition, much of which has been reviewed
by the Member, it is seen that every Canadian province and territory regulates
the profession of engineering. There are provisions controlling and restricting
the use of terms including “professional engineer”; “P.Eng.”; “engineer” and
“engineering”. Persons cannot use those terms to describe themselves or their
businesses unless duly authorized by the appropriate authority. In many cases,
no corporation or business may include in its corporate or business name any
such term unless duly authorized.
[22]
The
Hearing Officer appropriately refused to consider Kizas’ evidence where it ventured
into opinion evidence, as he did not possess the necessary qualifications in
the areas in which he expressed those opinions such as public interest and
public order.
[23]
Kizas
stated that neither the original applicant for the mark, nor the current
applicant (assignee), is licensed or registered to provide engineering services
in any of Canada’s provinces or territories.
[24]
The
affidavit of Roberts, filed in the Opposition, provides the results of searches
on the internet and from libraries, in respect of instances where ENGINEERING
EXCELLENCE and the like may appear. Roberts also noted that, according to the internet,
the Applicant had no business locations in Canada.
[25]
The
affidavit of Gort provides the results of internet searches that she conducted
as to the word “engineer” or “engineering” .She also provided a record of some
53 Canadian Trade-mark Registrations which included the words “engineer”, “engineers”,
“engineered” or “engineering”.
[26]
As
to the Trade-mark Registrations, Kizas filed a rebuttal affidavit. I accept what
the Member wrote at paragraphs 21 and 22 of the reasons in this respect:
[21]
Mr. Kizas states that he has reviewed the 53 trade-mark registrations attached
as Exhibit N to the Gort affidavit, and noted that for some time the Opponent
has had a policy of opposing trade-marks which consist of or include the term
“engineering” in order to both protect the integrity of the title of members of
the profession of engineering in Canada and to protect the public [paragraphs 4
to 7 of his affidavit].
[22]
More particularly, Mr. Kizas states that of the 53 trade-mark registrations
located by Ms. Gort, ten were registered with the consent of the Opponent; two
were registered by publishers of magazines or journals directed towards members
of the engineering profession; four were registered before the Opponent began
opposing problematic applications; two include the term “engineering” in such
exceptionally small font size that the fact that the word “engineering” was
included in the trade-mark was not noted at the time to oppose the
applications; and the remaining 35 registrations include the word “engineered”
not “engineering” or “engineer” [paragraphs 8 to 14 of his affidavit]. However,
transposing the comments of Board Member Bradbury in Comsol, supra, at para 21,
to the present case, there is no evidence that members of the Canadian public
are aware of the Opponent’s logic concerning what it considers to be an
acceptable or unacceptable use of the word “engineering” by parties who are not
licensed to practice engineering in Canada.
[27]
The
affidavit of Allen filed in this appeal is irrelevant save as to the removal of
certain issues.
[28]
The
affidavit of Eller filed on this appeal establishes that the present (not the
original) Applicant employs many engineers; none of them apparently Canadian,
and has a long history of designing and manufacturing brake parts; apparently
not in Canada.
[29]
What
we don’t have is as important as what we do have. First, we have no evidence
from the Applicant as to its use of the trade-mark in Canada. A statement, apparently not specific to Canada, from one of its executives with an
illegible logo, said by Counsel to contain the words “Engineering Excellence is
our Heritage”, with the initials TM following it, is in evidence. That document
includes the use of that expression in a descriptive, non-trade-mark sense (Exhibit
CC to the Roberts Affidavit). It was well within the power of the Applicant to
show the Hearing Officer or the Court how it was actually using the mark.
[30]
With
respect to the uses of “engineering” or “engineer” or “engineered” put forward
by Roberts and Gort, we have no evidence as to the actual use by the persons
said to use those terms. We have only copies of cryptic internet entries. We
have no evidence of actual use of the Registered Trade-marks. We have no
evidence of the “consent” to use of some of those trade-marks by the
Respondent.
[31]
Importantly,
we have no evidence as to what members of the public in Canada actually think
when confronted with the use of words such as “engineering” and the like;
whether on wares, services, or otherwise. While the use of surveys has, in my
view correctly, been disparaged by the Supreme Court of Canada in Masterpiece
Inc v Alavida Lifestyles Inc, [2011] 2 S.C.R. 387, as it was getting well out
of hand, there are many ways besides expensive surveys in which the Court may
be informed as to actual public reaction.
[32]
Here,
the Hearing Officer and the Court, relying only on fragments from the internet
and the like, are left to determine whether the mark at issue is “distinctive”
or “clearly descriptive” or “deceptively misdescriptive” with lawyers for the
parties adding their rhetoric in an endeavour to pull the decision-maker this
way or that.
[33]
In
this regard, unless the new evidence filed on appeal requires otherwise, the
Court must be respectful of the decision of the Hearing Officer, whose
expertise lies in determining whether a mark is “clearly descriptive” or
“deceptively misdescriptive” or “distinctive”. If the law has been correctly
applied, then the Court must consider whether the Hearing Officer’s decision
was within the acceptable range of reasonable results.
WHAT IS THE MARK AT ISSUE?
[34]
The
mark for which registration is sought is the phrase ENGINEERING EXCELLENCE IS
OUR HERITAGE. As the Supreme Court has stated in Masterpiece, supra,
these words could be written in any manner and be accompanied by any other
material. I repeat what Rothstein J for the Court wrote at paragraph 55:
55
In this case, Alavida's registration (TMA 684557) identifies the trade-mark
that Alavida applied for and was subsequently registered -- the words
"Masterpiece Living". This trade-mark is identified only in a textual
form. It would therefore permit Alavida to use the words "Masterpiece
Living" in any size and with any style of lettering, color or design. As
found by the Federal Court of Appeal in Mr. Submarine Ltd. v. Amandista
Investments Ltd., [1988] 3 F.C. 91:
Nothing
restricts the appellant from changing the colour of its signs or the style of
lettering of "Mr. Submarine" or from engaging in a telephone and
delivery system such as that followed by the respondent or any other suitable
system for the sale of its sandwiches. Were it to make any of these changes its
exclusive right to the use of "Mr. Submarine" would apply just as it
applies to its use in the appellant's business as presently carried on. Whether
the respondent's trade marks or trade names are confusing with the appellant's
registered trade mark must accordingly be considered not only having regard to
the appellant's present business in the area of the respondent's operations but
having regard as well to whether confusion would be likely if the appellant
were to operate in that area in any way open to it using its trade mark in association
with the sandwiches or services sold or provided in the operation. [Emphasis
added; pp. 102-3.]
[35]
Rothstein
J proceeded in Masterpiece to consider the question of confusion,
wherein the Court is to put itself in the position of an average person who is
likely to be a consumer of the wares or services in question. What must be
considered are those characteristics that define the relevant mark. It is those
defining characteristics, not the whole of the mark, that are to be considered.
He wrote at paragraph 61:
61
In a case such as this, comparison can be approached by considering only those
characteristics that define the relevant trade-marks or trade-name. It is only
these elements that will allow consumers to distinguish between the two
trade-marks or between the trade-mark and the trade-name. Here, because
Alavida's proposed trade-mark is only the words "Masterpiece Living",
the difference between or similarity with each of Masterpiece Inc.'s
trade-marks and trade-name must be assessed only on the basis of these words
alone. In my opinion, Alavida's "Masterpiece Living" is closest to
Masterpiece Inc.'s "Masterpiece the Art of Living". I think that
comparing this Masterpiece Inc. trade-mark with the Alavida trade-mark is decisive.
If Alavida's mark is not likely to cause confusion with this Masterpiece Inc.
mark, it is unnecessary to consider the other Masterpiece Inc. marks and
trade-name which are less similar to the Alavida trade-mark. Conversely, if
Alavida's trade-mark is found to be likely to cause confusion with this
Masterpiece Inc. mark, it is unnecessary to test resemblance of its trade-mark
with other Masterpiece Inc. trade-marks or its trade-name, although they may be
relevant as part of the surrounding circumstances when likely confusion with
the "Masterpiece the Art of Living" trade-mark is considered.
[36]
While
Rothstein J was dealing with the issue of confusion in Masterpiece, the
manner in which other issues such as “clearly descriptive” or “deceptively
misdescriptive” or “distinctiveness” are to be approached is to be done in the
same manner. What would the average consumer consider, upon encountering the
mark, to be the defining characteristics?
[37]
This
is the approach taken by Justice O’Reilly of this Court in Canadian Council
of Professional Engineers v John Brooks Co, (2004), 35 CPR (4th)
507, where he wrote at paragraph 21:
21
If part of a proposed trade-mark is objectionable, the question arises whether
the whole can still be registered. Here, given that JBCL cannot register
"Spray Engineering", can it register "Brooks Brooks Spray
Engineering"? The answer depends on whether the objectionable part of the
proposed trade-mark forms a significant part of the whole and, therefore,
causes it to remain deceptively misdescriptive. The parties differed on the
question whether the offensive part of the trade-mark must be the dominant
element of it or merely a dominant feature. As I read the case law, the proper
test is whether the deceptively misdescriptive words "so dominate the applied
for trade mark as a whole such that ... the trade mark would thereby be
precluded from registration ...": Chocosuisse Union des Fabricants --
Suisses de Chocolate v. Hiram Walker & Sons Ltd., (1983), 77 C.P.R. (2d)
246 (T.M.O.B.), citing Lake Ontario Cement Ltd. v. Registrar of Trade Marks
(1976), 31 C.P.R. (2d) 103.
[38]
This
approach was adopted by the Hearing Officer in this case, as set out in the
Officer’s reasons at paragraphs 45 and 46:
[45]
In order for a trade-mark to be deceptively misdescriptive, the test “is
whether the deceptively misdescriptive words ‘so dominate the applied for
trade-mark as a whole such that … the trade-mark would thereby be precluded
from registration’”[Brooks, supra, at p. 514].
[46]
I find the word “ENGINEERING” so dominates the Mark. The word “EXCELLENCE” has
a laudatory connotation and is primarily a descriptive term. The words “IS OUR
HERITAGE” are secondary and directly refer to the first portion of the Mark.
The dominant message remains that of “ENGINEERING” or “ENGINEERING EXCELLENCE”.
[39]
I
concur with the Hearing Officer’s findings in this regard.
SECTION
12(1)(b) – “CLEARLY DESCRIPTIVE” OR “DECEPTIVELY MISDESCRIPTIVE”
[40]
Section
12(1)(b) of the Trade-marks Act prohibits the registration of a mark
which is “clearly descriptive” or “deceptively misdescriptive”, of the wares or
services in question or the conditions of or the persons employed in their
production or their place of origin:
|
12.
(1) Subject to section 13, a trade-mark is registrable if it is not
. . .
(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;
|
12.
(1) Sous réserve de l’article 13, une marque de commerce est enregistrable
sauf dans l’un ou l’autre des cas suivants :
. . .
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;
|
[41]
As
to whether a mark is “clearly descriptive”, I accept what Justice Strayer (as a
Judge in this Court) wrote in General Foods Inc v Tradition Fine Foods Ltd,
(1996), 35 CPR (3d) 564 at page 566:
To
be non-registrable under s. 12(1)(b) of the Trade-marks Act, R.S.C. 1985, c.
T-13, on the basis decided by the Opposition Board it is necessary that a trade
mark be “…clearly descriptive…of the character or quality of the wares…in
association with which it is used or proposed to be used…”. To be “clearly”
descriptive there must be more than a “mere implication or suggestion” of the
nature of the wares: Thomas J. Lipton, Ltd. v. Salada Foods Ltd. (No. 3)
(1979), 45 C.P.R. (2d) 157 (F.C.T.D.) at p. 160. The meaning of the trade mark
must be “easy to understand, self-evident or plain…”. Drackett Co. of Canada
Ltd. v. American Hone Products Corp. (1968), 55 C.P.R. 29 at p. 34,
[1968] 2 Ex. C.R. 89, 38 Fox Pat. C. 1 (Ex. Ct.).
[42]
With respect to
“deceptively misdescriptive”, I accept what the late Justice Cattanach of this
Court wrote in Atlantic Promotions Inc v Registrar of Trade Marks,
(1984), 2 CPR (3d) 183, at pages 186 – 187, where he considered the wording of
section 12(1)(b) of the Trade-marks Act and compared it with the wording
of section 26(1)(c) of the predecessor statute, Unfair Competition Act:
By virtue of para. 26(1)(c) of
the Unfair Competition Act registration was prima facie, denied to word marks
that “were clearly descriptive or misdescriptive of the character or quality of
the wares”. The advert “clearly” also modified the adjective “misdescriptive”.
In para. 12(1)(b) of the Trade
Marks Act the word “clearly” as modifying the word “misdescriptive” has been
replaced by the word “deceptively” so that it now reads “deceptively
misdescriptive”.
The change was deliberate.
Many words may be “clearly
misdescriptive” of the wares with which they are used in association but are
not necessarily “deceptively misdescriptive”.
In my view the proper test to be
applied to the determination as to whether a trade mark in its entirety is
deceptively misdescriptive must be whether the general public in Canada would
be misled into the belief that the product with which the trade mark is
associated had its origin in the place of a geographic name in the trade mark.
Whether a trade mark is
deceptively misdescriptive is as much a question of fact as is whether one
trade mark is confusing with another.
[43]
The
last paragraph of this passage is particularly significant. Each case will turn
on its own facts. Those experienced in the trade-mark field may remark on the
seeming contradictions in the jurisprudence where “Tavern” for beer has been
held to be registrable, but “Java Café” for coffee has not; by way of example.
[44]
In
the present case, the issue is whether the mark, being the phrase ENGINEERING
EXCELLENCE IS OUR HERITAGE, in which the dominant message is ENGINEERING or
ENGINEERING EXCELLENCE, is “clearly descriptive” or “deceptively
misdescriptive” of wares, being “brake pads for land vehicles; brake rotors for
land vehicles”.
[45]
The
Hearing Officer determined that the mark was not “clearly descriptive” of those
wares. At paragraphs 43 and 44 of the reasons, the Officer wrote:
[43]
As stressed by the Opponent at the oral hearing, the Mark is more in the nature
of a slogan. Relying on the dictionary definitions of the term “ENGINEERING”
provided by both the Applicant (through the Gort affidavit) and the Opponent
(through the first Kizas affidavit), I find it reasonable to conclude that when
considered in the context of the phrase “ENGINEERING EXCELLENCE IS OUR
HERITAGE”, the term “engineering” may function as:
1.
a noun referring to either “the application of science to the design, building,
and use of machines, constructions, etc.” or “the work done by an engineer” and
is being used together with the noun “EXCELLENCE” to convey a unitary idea,
equivalent to saying “EXCELLENCE IN ENGINEERING”; or
2.
a verb in a fanciful way to convey the idea of “DESIGNING/or CREATING
EXCELLENCE”.
[44]
As evidenced by the Opponent, the Applicant is not licensed or registered to
provide engineering services in any of the provinces or territories of Canada, nor are any members of the engineering profession in Canada employed by the Applicant
[paragraphs 51 and 2 of his first and third affidavits respectively]. As such,
the Mark cannot be found to be clearly descriptive of the persons employed in
the production of the Wares. Thus, the question becomes whether the Mark is
deceptively misdescriptive, that is, whether it misleads the public? In other
words, as a matter of first impression, would the public be deceived into
thinking that the Wares have been designed, developed and tested by engineers
practicing in the area of automotive engineering?
[46]
The
Officer found, however, that the mark was “deceptively misdescriptive” of those
wares. At paragraphs 45 to 49 of the reasons, the Officer wrote:
[45]
In order for a trade-mark to be deceptively misdescriptive, the test “is
whether the deceptively misdescriptive words ‘so dominate the applied for
trade-mark as a whole such that … the trade-mark would thereby be precluded
from registration’”[Brooks, supra, at p. 514].
[46]
I find the word “ENGINEERING” so dominates the Mark. The word “EXCELLENCE” has
a laudatory connotation and is primarily a descriptive term. The words “IS OUR
HERITAGE” are secondary and directly refer to the first portion of the Mark.
The dominant message remains that of “ENGINEERING” or “ENGINEERING EXCELLENCE”.
[47]
While the term ENGINEERING may have a broader significance than merely skills
of professional engineers, I am of the view that, given the very nature of the
Wares, the average Canadian is as likely, if not more likely, to react to the
Mark by thinking that professional engineers are involved in the production of
the Wares.
[48]
My finding is reinforced by the fact that Exhibits X and Y to the Roberts
affidavit discussed above show that the phrase “ENGINEERING EXCELLENCE” is used
by various entities (which fact, as indicated above, is not contested by the
Applicant), the contexts of use of which all appear to relate to either the
engineering profession or practice of engineering or to the education and
training of engineers in Canada or abroad.
[49]
In view of the foregoing, I find that the Applicant has not discharged its
burden to establish, on a balance of probabilities, that the Mark was not
deceptively misdescriptive, as of the filing date of the application, of the
persons employed in the production of the Wares.
[47]
In
this appeal, the Court has been provided additional evidence in the Eller
affidavit. That affidavit states that the Applicant in fact employs a
substantial number of engineers in the production of the wares in question, and
had done so for decades. Eller’s view is that the Applicant’s engineering is,
in effect, excellent. This affidavit does not, however, link any of this
activity, or any of those engineers, to Canada.
[48]
Given
the Eller affidavit, it may be readily concluded that the phrase “Engineering
excellence is our heritage” is a clear description of the manner in which the
wares are designed and produced by the Applicant, unless one were to take the
view that the term “engineering” is the mind of the Canadian public pertains to
the professional services of those engineers licensed by one or more of
Canada’s provinces or territories to provide such services.
[49]
The
Hearing Officer, at paragraph 44 of her reasons, clearly had in mind the
evidence of Kizas, providing the statutes and regulations of Canada’s provinces
and territories governing and restricting the use of terms such as
“engineering” to those licensed to provide such services. In decisions such as Brooks,
supra, the Court recognized that the regulation of terms such as “engineering”
must be considered. O’Reilly J wrote at paragraphs 19 and 20:
19
JBCL argues that it is only using the word "engineering" in its
ordinary sense, referring to the use of skill or art in a particular field of
activity. It is not using it in the professional sense. However, given that use
of the term "engineering" is regulated by law, JBCL's argument is
unpersuasive. The situation is different here than in respect of other
registered uses of the word "engineering" cited by JBCL (e.g.
"document engineering", "engineering sunglasses", and
"body engineering"). In those cases, there is little chance that
consumers would be misled into thinking that professional engineers are
associated with the business. While "spray engineering" may not be a
recognized field of speciality in the engineering profession, those words
connote a range of sophisticated technical services related to fluid handling
and distribution and, therefore, a connection with the kinds of services one
might expect professional engineers to provide.
20
In my view, the very fact that the term "engineering" is closely
regulated has implications here. Most people would assume that businesses using
that word in their name offer engineering services and employ professional
engineers, unless the context clearly indicated otherwise. The Board itself
arrived at a similar conclusion when it refused to register JBCL's proposed
trade-mark "Spray Engineering" on the grounds that the average client
of JBCL would assume that engineers were involved in all or most of the
business's activities: Canadian Council of Professional Engineers v. John
Brooks Co., [2001] T.M.O.B. No. 218.
[50]
In
Canadian Council of Professional Engineers v The Engineered Wood Association,
(2000), 7 CPR (4th) 239, Justice O’Keefe of this Court held that the
question as to whether one was a licensed Canadian engineer was irrelevant. He
wrote at paragraphs 57 and 58:
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.
[51]
More
recently, in Canadian Council of Professional Engineers v Kelly Properties
LLC, 2012 FC 1344, Justice O’Keefe held that the mark KELLY ENGINEERING
RESOURCES for personnel employment services was not registrable, in that it
implied that the services rendered were those of Canadian licensed engineers.
He wrote at paragraphs 149, 153, 156 and 157:
149
The trade-mark, when considered in association with the listed services,
implies that the respondent is entitled to provide engineering employment
services to engineers and companies seeking to hire engineers. However, as
indicated by the APEGGA Policy and the affidavit of Mr. Neth, human resource
and staffing companies that offer services in the manner offered by the
respondent require a permit to practice in Alberta. The respondent does not
hold any such permit, which suggests that the trade-mark is deceptively
misdescriptive of the services provided under that name. This is exacerbated by
the evidence that the trade-mark is used to advertise employment of qualified
designers, drafters and technicians. As noted by Mr. Neth, only licensed
engineers are entitled to practice engineering in Canada and this advertisement
misleads consumers into believing that designers, drafters and technicians
placed by the respondent are also qualified to practice engineering.
. . .
153
For these collective reasons and recalling that the purpose of this portion of
paragraph 12(1)(b) is to prevent the purchasing public from being misled, I
find that the trade-mark is deceptively misdescriptive of the character and
quality of the listed services. It is therefore prohibited pursuant to
paragraph 12(1)(b) of the Act.
. . .
156
I also note the underlying rationale for the APEGGA Policy as explained by Mr.
Neth. This policy is in place to protect customers who are unfamiliar with the
practice of professional engineering. I find particularly troublesome the
potential that a customer seeking to hire a qualified engineer, as advertised
by the respondent, hires an engineer through the respondent's trade-mark that
may be qualified in another jurisdiction but not licensed to practice
engineering in Canada. This offends the objects specified in several Canadian
engineering statutes. For example, subsection 5(c) of the Engineering
Profession Act, RSNS 1989, c 148 (included in Mr. Kizas' affidavit) clearly
states:
The
objects of the Association are to [...] assure the general public of the
proficiency and competency of professional engineers in the practice of
engineering [...]
157
I find that the acceptance of the trade-mark application runs the risk of
opening up the door to abuse, thereby placing the public interest at risk, the
protection of which lies at the core of the regulation of the engineering
profession in Canada. This accentuates the importance that a trade-mark used in
a field related to engineering not be deceptively misdescriptive or of such a
nature as to deceive the public in a manner that ultimately offends the public
order. The trade-mark is therefore not saved by subsection 14(1) of the Act.
[52]
On
the evidence before me, which is unaffected by the evidence of Eller, I
conclude, as did the Hearing Officer, that:
…the
average Canadian is as likely, if not more likely, to react to the mark by
thinking that professional engineers are involved in the production of the
wares (paragraph 47)
and
..the
contexts of the use of [ENGINEERING EXCELLENCE] which all appear to relate to
either the engineering profession or practice of engineering or to the
education and licensing of engineers in Canada and abroad
(emphasis added – paragraph 48)
[53]
The
Hearing Officer did not restrict her findings only to Canadian engineers
licensed to practice in one or more of Canada’s provinces or territories. On
the evidence before her, she was correct in not limiting her findings in this
way. While no person can practice the engineering profession in Canada without
an appropriate licence, there is no evidence in this case that would indicate or
suggest that the average consumer of brake products in Canada would, upon
encountering the mark, believe that the products were designed of produced by
licensed Canadian engineers.
[54]
Given
the Eller evidence, I conclude that the phrase “Engineering excellence is our
heritage” is clearly descriptive of the persons employed in the production of
the wares, being brakes and brake pads and rotors. The phrase is not
“deceptively misdescriptive”. Thus, I will come to the same result as the
Hearing Officer; namely, that the mark is not registrable having regard to
section 12(1)(b) of the Trade-marks Act, but for the opposite reasons.
SECTION 2 – “DISTINCTIVE”
[55]
Section
2 of the Trade-marks Act defines distinctive as:
|
“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.
|
[56]
Section
38(2)(d) of that Act provides that the registration of a trade-mark may
be opposed on the basis that it is not distinctive.
[57]
As
the Supreme Court of Canada has stated, distinctiveness is the very essence of
a trade-mark; it allows a consumer to identify the source of the goods (Mattel
Inc v 3894207 Canada Inc, [2006] 1 S.C.R. 772, at para 75; Kirkbi AG v
Ritvik Holdings Inc, [2005] 3 S.C.R. 302, at para 39).
[58]
As
previously stated, the onus rests on the Applicant to prove that the mark is
distinctive in respect of the wares in question. The Opponent CCPE has provided
evidence showing use of the phrase “engineering excellence” in Canada and
elsewhere in a variety of contexts relating to, among other things, academic
achievements, design of products, and the like.
[59]
The
Hearing Officer was correct in concluding, at paragraphs 52 and 53 of her
reasons, that the Applicant had not demonstrated that the mark was not adapted
to distinguish; nor did it actually distinguish the wares of the Applicant.
OBSERVATIONS AS
TO THE PROTECTION OF TERMS SUCH AS “ENGINEERING”
[60]
I
am aware that the Respondent CCPE has endeavoured to be zealous in protecting
some form of exclusivity in respect of words such as “engineer” and
“engineering”. As set out in the Kizas affidavit, all of Canada’s provinces and
territories have legislation dealing with the use of such terms; particularly
in the context of services rendered by licensed professional engineers. Some of
the cases referred to in these Reasons illustrate the efforts made by the
Respondent to be zealous in protecting such names.
[61]
The
present decision is based on the evidence in the record and on the issues put
before the Court. Initially, the CCPE also took the position that the mark
sought to be registered offended the provisions of section 9(1)(n)(iii) of the Trade-marks
Act, which provides that no person shall adopt a mark that consists of or
is likely to be mistaken for a mark adopted and used by any public authority in
Canada as an official mark for wares or services. Initially, it appears that
this matter was in play before the Opposition Board, but was not dealt with in
the reasons. An Amended Notice of Application filed by the Applicant in this
Court put this issue in play. The Allen Affidavit, filed with this Court,
attaches a letter from CCPE’s lawyers making it clear that this ground would
not be asserted on appeal.
[62]
At
the hearing before me, Counsel for each of the parties acknowledged that
section 9(1)(n)(iii) of the Act was not in issue; consequently, my
decision does not deal with this matter.
CONCLUSION AND
COSTS
[63]
In
the result, I come to the same conclusion as the Hearing Officer; the mark is
not registrable. I agree with the Officer that the mark has not been shown to
be distinctive. I agree with the Officer that registration is prohibited by
section 12(1)(b) of the Trade-marks Act, but it is because the mark is
“clearly descriptive” and not because it is “deceptively misdescriptive”.
[64]
The
appeal will, therefore, be dismissed. The parties have agreed that there shall
be no order as to costs.
JUDGMENT
FOR THE REASONS
PROVIDED:
THIS COURT’S JUDGMENT
is that:
1.
The
appeal is dismissed; and
2.
No
Order as to costs.
“Roger T. Hughes”
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