Docket: T-394-14
Citation:
2015 FC 449
Ottawa, Ontario, April 14, 2015
PRESENT: The Honourable Mr. Justice Zinn
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BETWEEN:
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COLLEGE OF DIETITIANS OF ALBERTA
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Applicant
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and
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3393291 CANADA INC. CARRYING ON
BUSINESS AS CANADIAN SCHOOL
OF NATURAL NUTRITION
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Respondent
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ORDER AND REASONS
Introduction
[1]
The College of Dieticians of Alberta [the
College] applies pursuant to subsection 57(1) of the Trade-marks Act,
RSC 1985, c T-13 [the TMA] for an order expunging five certification
marks and two commercial marks held by the Canadian School of Natural Nutrition
[CSNN].
[2]
The College is a professional regulatory body,
created in 2002 under Alberta’s Health Professions Act, RSA 200, cH-7
[the HPA]. Its aim is to regulate the practice of dietetics by
establishing education standards and ensuring the competency of its members.
[3]
CSNN is a private vocational school, founded in
1995 in Ontario, with 14 branches across Canada, all operated by franchisees
and licensees pursuant to written agreements. Over 5,500 students have
graduated from the school since its establishment.
[4]
The certification marks [the Marks] at issue are
the following:
•
R.H.N. (TMA791,677)
•
R. H. N. Registered Holistic Nutritionist
(TMA791,676)
•
R.H.N. Holistic Nutritionist (TMA802,045)
•
R.H.N. Holistic Nutritional Consultant
(TMA791,675)
•
R.H.N. Registered Holistic Nutritional
Consultant (TMA791,679)
[5]
These Marks are registered in association with
the following services:
Nutrition and preventative health care
services incorporating a body-mind-spirit or holistic approach, namely
evaluating a client’s nutritional needs, providing an individualized plan which
includes recommendations for particular whole foods, lifestyle and supplements
along with an individualized meal plan, shopping tips and recipe ideas.
[6]
They were registered subject to the following
provisos:
(a) The certification marks shall be used
only in association with services that confirm to standards of performance
established by the applicant. (b) The standards of performance are as follows:
completion of the educational program offered by the Canadian School of Natural
Nutrition (CSNN) in the field of nutrition and preventive health care, and the
body-mind-spirit or holistic approach of heath and nutrition counselling. (c) The
applicant shall have the right to inspect the performance of the said services
in order to ensure that the standards of performance are being maintained by
the licensees in accordance with those taught through the educational program.
[7]
The two commercial marks at issue are the
following:
•
R.H.N. & Design (TMA520,208)
•
R. H. N. (TMA520,209)
CSNN has agreed to the issuance of an Order
expunging the two commercial marks.
Issues
[8]
The fundamental issue is whether all or any of
the Marks are validly registered or whether they ought to be expunged. This
raises the following questions:
1.
Are the Marks clearly descriptive or deceptively
misdescriptive contrary to paragraph 12(1)(b) of the TMA such that their
registrations are invalid pursuant to paragraph 18(1)(a)?
2.
Are the Marks likely to lead to the belief that
their associated services have received governmental approval or authority
contrary to paragraph 9(1)(d) of the TMA such that they are not
registrable under paragraph 12(1)(e), making their registrations invalid pursuant
to paragraph 18(1)(a)?
3.
Are the Marks lacking distinctiveness, making
their registrations invalid pursuant to paragraph 18(1)(b) of the TMA?
4.
Should the court expunge the mark “R.H.N.
Registered Holistic Nutritional Consultant” because:
a.
It had been abandoned, making its registration
invalid pursuant to paragraph 18(1)(c) of the TMA; or
b.
CSNN misstated its first use contrary to
subsection 16(1) of the TMA, such that CSNN is not the person entitled
to secure the registration, and rendering the registration invalid pursuant to paragraph18(1)(d)?
5.
Did CSNN misstate its entitlement to use the
Marks at the time of registration contrary to subsection 30(i) of the TMA
because the Marks violate paragraph 9(1)(d), making the Marks’ registrations
invalid pursuant to paragraph 18(1)(d)?
[9]
The relevant statutory provisions are reproduced
in the attached Appendix.
Analysis
A.
Descriptiveness
[10]
The College submits that the Marks of CSNN are
clearly descriptive or deceptively misdescriptive contrary to paragraph 12(1)(b)
of the TMA because they are professional designations, or are clearly
descriptive overall, or are deceptively misdescriptive. It submits that the
Marks have not acquired distinctiveness.
(1)
Professional Designations
[11]
The College points to CSNN’s use of the Marks as
professional designations, which, it maintains, indicates descriptiveness. The
College points to numerous examples in CSNN’s classroom brochures, student
handbooks, online advertisements and graduates’ promotional materials where it
found explicit and implicit references to the Marks as a professional
designation. The College also notes the dictionary definitions for each of the
words making up the Marks – i.e., “registered”, “holistic”, “nutritional”,
“nutritionist”, and “consultant”
– which, in using terms such as “professional”
and “specialist”, it says further demonstrate
that these Marks are professional designations.
[12]
The College points to jurisprudence from both
the Federal Court and the Trade-Mark Opposition Board, on which it relies in
support of the proposition that the simple use of certification marks as
professional designations will make the marks clearly descriptive of the wares
or services associated with the practice of that profession: Life
Underwriters Ass of Canada v Provincial Ass of Québec Life Underwriters,
[1989] 1 FC 570, rev’d on other grounds (1990) 3 FC 500 (FCA), rev’d on other
grounds [1992] 1 S.C.R. 440 [Life Underwriters]; Canadian Institute of Bookkeeping Incorporated v Institute of
Professional Bookkeepers of Canada,
2012 TMOB 181; Canadian Council of Professional Engineers v Lubrication
Engineers, Inc, [1992] 2 FC 329 (FCA) [Lubrication Engineers]; Association
of Professional Engineers of the Province of Ontario v Canada (Registrar of
Trade Marks), [1959] Ex C R 354 [Professional Engineers]; Canadian
Council of Professional Engineers v John Brooks Co (2001), 21 CPR (4th)
397 (TMOB); Canadian Council of Professional Engineers v John Brooks Co,
2004 FC 586; Canadian Council of Professional Engineers v Management
Engineers GmbH (2004), 37 CPR (4th) 277 (TMOB) [Management
Engineers]; College of Traditional Chinese Medicine Practitioners and
Acupuncturists of British Columbia v Council of Natural Medicine College of
Canada, 2009 FC 1110 [Chinese Medicine]. In short, the
College submits that since the Marks of CSNN are used as professional
designations, they are necessarily clearly descriptive, contrary to paragraph
12(1)(b) of the TMA.
[13]
As further support for
its proposition, the College points to a 2010 Canadian Intellectual Property
Office practice notice indicating that if research discloses that a mark or
portion of a mark consists of a professional designation, then trade-mark
examiners should find a violation of paragraph 12(1)(b) if a consumer would
immediately, as a matter of first impression, conclude that the wares or
services are produced by a professional from the designation. It also states,
referencing Chinese Medicine at para 53, that the mere addition of an
abbreviation, acronym or initials of the professional designation to the mark
will not render it registrable.
[14]
The College did not address in its written
submission, the court’s recent decision in Canadian Dental Ass/L’Assoc
Dentaire Canadienne v Ontario Dental Assistants Ass, 2013 FC 266, aff’d
2013 FCA 279 [CDA] where, at para 23, Justice Manson stated that
nothing in the TMA or the case law “limits the
ability of a professional designation to validly act, in use, as a
certification mark.”
[15]
In oral submissions, the College accepted that
professional designations might not be clearly descriptive per se, it
submits that such marks will still violate paragraph 12(1)(b) of the TMA
when used to indicate that those providing associated services are members of a
professional designation rather than used to distinguish these services from
those of other traders: CDA at para 30. In other words, it submits that
the mark must characterize the services – i.e., act as an adjective –
rather then describe the person – i.e., act as a noun.
[16]
The College submits that the Marks are used only
to designate the status of graduates as registered holistic nutritionists
rather than qualifying the services that they provide – that is, they do not
act as adjectives, but as nouns. As such, it submits that the Marks, as
professional designations, are still clearly descriptive contrary to paragraph 12(1)(b)
of the TMA and, following CDA, ought to be expunged.
[17]
I agree with CSNN that following Justice
Manson’s decision in CDA, it is clear that the use of a mark as a
professional designation does not automatically make that mark clearly
descriptive contrary to paragraph 12(b) of the TMA. While past
jurisprudence may have implied otherwise, Justice Manson’s statement at para
23, is conclusive of the issue:
To the extent the case of Life
Underwriters Assn of Canada v Provincial Assn of Quebec Life Underwriters,
[1988] FCJ 564, and cases before the Opposition Board following that decision
are relied upon to suggest that a professional designation can never serve to
be a valid certification mark, I disagree. Nothing in the Act so limits the
ability of a professional designation to validly act, in use, as a
certification mark, provided such a designation meets the necessary criteria
outlined above with respect to lack of clear descriptiveness, distinctiveness,
absence of a likelihood of confusion, and proper use.
[18]
In my view, CSNN’s Marks are not clearly
descriptive of the services of the professional designation because it does not
seem on the record that the Marks are used as professional designations. “R.H.N. Registered Holistic Nutritionist,” etc. – do
not actually refer to established professional titles. Indeed, though
the parties concede that there exist nutritional consultants who are not
graduates of the CSNN, neither provided any evidence that anyone other than
graduates use these exact designations or others that look like it (with the
one exception of one non-graduate who the CSNN challenged). It would seem that
the CSNN is attempting, through the use of these Marks, to bring about a known
professional group.
[19]
In using the Marks, the CSNN is not describing
services that are generic to an existing profession since there is no such
existing profession as described by the Marks. The Marks therefore do not
contravene paragraph 12(1)(b) in this sense.
[20]
However, in using the Marks as professional
designations, the College submits that CSNN nevertheless runs into other
problems because the Marks seem to pertain to or describe individual graduates
rather than the services they provide. As noted by the College, the
Marks are often used in the form of a noun – an R.H.N. – rather than an
adjective or descriptor – an R.H.N.’s services. Moreover, although the
CSNN highlights promotional materials by the graduates where they place one of
the Marks after their names and then explain the services they provide, I am
not convinced that the explanations qualify the Marks. Rather, it seems, with
a few minor exceptions, that the Marks are used to describe the graduates
and the subsequent statements regarding the services performed are separate and
do not relate back to the Marks. The specific example cited by the CSNN of
Shari Anticknap’s LinkedIn profile demonstrates this. In one paragraph it
indicates that she “hold[s] an RHN (Holistic
Nutritionist) designation” and then, in a separate paragraph, it explains
the services offered. Similarly, on graduates’ profiles on CSNN’s own site,
the graduates place “R.H.N.” mark directly after
their names and, in lower paragraphs, describe the various services they
perform. In all these cases, it is clear, from a visual standpoint, that the
Marks are associated with the person rather than what he or she does. It is comparable,
as mentioned by the court during oral submissions, to an academic who might, on
promotional sites, indicate “M.A., University of
Toronto” after his or her name and then describe his or her specialties.
In those cases too, the designation would describe the individual rather than
qualify the subsequent description of specialties such that it would
distinguish them from specialities associated with other designations– e.g., “M.A., McGill University” or “M.A.
University of Calgary.” As such, in this case, much like in CDA
itself, though the Marks are not in and of themselves problematic for being
used as professional designations, their use to identify individuals as being
part of a profession, rather than distinguishing the services associated
with the Marks, causes difficulty.
[21]
This issue, despite arising in relation to
paragraph 12(1)(b) of the TMA in the parties’ submissions, in my view, pertains
to distinctiveness rather than descriptiveness. The issue is whether the
Marks, in qualifying individuals instead of characterizing the services
performed in association with the Marks, fail to distinguish these services from
those performed by others. This has nothing to do with descriptiveness;
however, it may go to distinctiveness.
(2)
Marks as Clearly Descriptive Overall
[22]
Apart from the issue of professional
designations, the College submits that the Marks are also clearly descriptive
overall.
[23]
First, the College submits that the various
component words of the Marks – “registered”, “holistic”, “nutritionist”,
etc. – are all descriptive and that this can be seen from dictionary
definitions, which show that these are ordinary, well-known English words, with
descriptive meanings. It notes that while these definitions come from
dictionaries published several years after the material dates, they are still
reliable, given that these words are not new words, but long-standing ones with
established meanings unlikely to have changed.
[24]
Additionally, the College argues that the
placement of the acronym “R.H.N.” next to these
words does not alter the words’ clear descriptiveness because these descriptive
phrases dominate the Marks: College of Traditional Medicine, at paras
218-221. Furthermore, it says that the acronym “R.H.N.”
is itself descriptive. The College points to the website AcronymFinder.com,
which indicates that “R.H.N.” stands for “Registered Holistic Nutritionist” which implies that
this term has a known, descriptive meaning. In any event, the College submits
that, where juxtaposed with “registered”, “holistic” and “nutritionist”,
the meaning of “R.H.N.” becomes obvious, clearly
standing for the words placed next to it. Since these words are descriptive, “R.H.N.” becomes descriptive too. Where “registered” is not used – e.g., in the case of “R.H.N. Holistic Nutritionist”– the College argues
that it is still plain that “R” stands for this
term. As explained by its affiant, Mr. Cook, consumers – i.e., adults inclined
to pay a consultant for holistic nutritional counselling – will know, due to
the proximity between “H” and “N” to “holistic” and “nutritionist”, that “R.H.N.”
is an acronym and that, as such, “R” equally
represents a word, which, in the health services context, will be “registered.” Even if this is not the case, and the court
accepts only that “H” and “N” are descriptive, the College submits that the
Marks will remain clearly descriptive since adding a non-descriptive element will
not distract from the clearly descriptive remainder of a mark: Canadian
Council of Professional Engineers v Oyj, [2008] TMOB No 110.
[25]
Regarding the use of the TM symbol
alongside the Marks, the College submits that this will not change the
descriptive quality of the words. In any event, it says that there is no
evidence that consumers see these symbols or understand their meaning, or that
they are used consistently.
[26]
The CSNN submits that the College has failed to
prove that the individual words making up the text of the Marks and represented
in “R.H.N.” – that is, “registered”,
“holistic”, “nutrition”,
“nutritional” and “consultant”
– are clearly descriptive. The dictionary evidence provided is too late,
consisting of printouts from current dictionaries rather than those available
at the material dates – i.e., 2009 and 2010. In any event, it says that there
is no evidence of definitions for the Marks as a whole, which is the proper
focus. Moreover, there is nothing from actual consumers demonstrating their
impressions of the Marks. The CSNN submits that Mr. Cook’s evidence must be
discounted. He is a member of the public, but importantly, he is the Executive
Director and Registrar for the College, and thus unusually familiar with the terms.
His opinions are therefore not reflective of actual public perception. There
is also no evidence of any other use of these same terms, in their order, by
competitors, suggesting that the Marks are not clearly descriptive: Fiesta
Barbeques Ltd. v General Housewares Corp, 2003 FC 1021, 239 FTR 99 [Fiesta]
at paras 17-18. Finally, the CSNN says that the TM symbol
frequently accompanies the Marks and their constituent words, alerting the
consumer that these terms are proprietary rather than ordinary descriptors and
there is no reason to believe that the public does not see or understand this
symbol.
[27]
With respect to “R.H.N.”
on its own, the CSNN submits that the College has not shown that it is clearly
descriptive either. It says that the College’s AcronymFinder.com evidence is
unreliable and has little probative value; there is nothing indicating who runs
the site, whether it represents the Canadian landscape, on what basis certain
acronyms are listed or how the College went about searching for “R.H.N.” The CSNN submits that the court should infer
from the very inclusion of this evidence that the College was unable to find an
entry for “R.H.N.” in any traditional dictionary,
meaning that it is not, in fact, part of the common lexicon or descriptive.
This case, it says, is therefore distinguishable from Chinese Medicine where
the court found historical and third party evidence that the acronym and longer
form of the marks in had been used interchangeably such that everyday users of
these services were familiar with these terms and the meaning of the acronym. The
absence of any third party use of the Mark “R.H.N.”
would indicate that it is not descriptive: Fiesta at paras 27-28. Moreover,
the CSNN disputes any suggestion that the consumer would, upon simply seeing “R.H.N.” on its own, conclude that it stands for “Registered Holistic Nutritionist.” Such a leap, it
submits, would require, firstly, determining that the letters were an acronym
and, secondly, guessing what words underlie this acronym. This involves
significant “mental gymnastics” contrary to the
approach set out in GWG. In fact, the CSNN disagrees that the public
would even perceive “R” as representing “registered,” with the College having provided no
evidence, other than the atypical opinion of Mr. Cook, that this is the case.
[28]
Finally, the CSNN submits that the Marks that
include both “R.H.N.” and other words are also
not clearly descriptive. “R.H.N.” itself is not
descriptive and, the CSNN submits, it will not become so by its placement next
to words. Indeed, following the “decoding”
process proposed by the College, the consumer would still need to determine
that “R.H.N.” is an acronym and decipher what
its underlying words are, again requiring mental gymnastics, particularly where
“registered” is not present and/or the words
forming the balance of the Mark do not correspond directly with “R.H.N.” As above, the CSNN disputes that the
consumer would, regardless, have known that “R”
meant “Registered.” Thus, even if the component
words are found to be clearly descriptive, the CSNN submits that the “R.H.N.” at front is not, therefore making the whole
of the Mark not clearly descriptive since the first word or syllable in a mark
will always be perceived on first impression as the dominant component of the
mark and most important in the minds of the public: Conde Nast Publications
Inc v Union des editions modernes (1979), 46 CPR (2nd) 183
(FCTD) [Conde Nast] at p 188.
[29]
Although the Marks may not be clearly
descriptive as professional designations, three of them – “R. H. N. Registered Holistic Nutritionist,” “R.H.N. Holistic Nutritionist” and “R.H.N. Registered Holistic Nutritional Consultant” –
are, in my view, clearly descriptive overall. Indeed, while, as discussed
above, these Marks do not simply refer to services generically performed by an
established professional, for the reasons that follow, I find that they still
make it immediately plain to consumers what their associated services entail,
failing in any way to distinguish these services as coming from the CSNN. As
such, these Marks violate paragraph 12(1)(b) of the TMA and their
registrations are invalid under paragraph 18(1)(a).
[30]
In examining facts relating to paragraph12(1)(b),
I agree with the parties that the material date is the date of registration –
in this case, 2009 and 2010 – and that the relevant perspective for determining
whether a mark is clearly descriptive is that of an everyday user of the
services: See Fiesta at para 26; Chinese Medicine at para 212. I
agree with the CSNN that in order to violate paragraph 12(1)(b), the mark must
be clearly descriptive, not somewhat descriptive or suggestive, and that
the mark must not be dissected into its component parts but rather considered
in its entirety, as a matter of first impression and imperfect recollection,
without resorting to mental gymnastics: Chinese Medicine at para 212; Home
Juice at p 76; GWG at pp 6-7.
[31]
In this case, I find that many of the Marks meet
this test. Looking first at the textual parts included in most of the Marks,
not only are each of the words clearly descriptive – i.e., “registered,” “holistic,”
“nutritional,” “nutritionist”
and “consultant” – but, most importantly, when
put together into various orders – i.e., “Registered
Holistic Nutritionist,”, “Holistic Nutritionist,” “Registered
Holistic Nutritional Consultant” and “Holistic
Nutritional Consultant” – it is quite obvious what is meant and that is
because they are descriptive. The dictionary evidence provided by the College,
although current, is likely the same as that which existed five or six years
ago, and it demonstrates the known, descriptive meanings of these words. When
seen next to each other, the words compliment each other and it is “easy to understand, self-evidence or plain” what
services they are associated with, requiring no mental gymnastics: GWG
at p 2.
[32]
As noted, it is necessary to consider the Marks
as a whole. Each Mark incorporates “R.H.N.” While
this inclusion will not change the clear descriptiveness of three of the four
Marks, which include both “R.H.N.” and text –
i.e., “R.H.N. Registered Holistic Nutritionist”,
“R.H.N. Registered Holistic Nutritional Consultant”
and “R.H.N. Holistic Nutritionist” – it will
have an effect on the fourth one – i.e., “R.H.N.
Holistic Nutritional Consultant.”
[33]
In the first three Marks, I find that “R.H.N.”, when found next to the balance of the Marks,
is easily understood and, when read altogether, on first impression, the Marks
will be clearly descriptive. This is so despite the fact that “R.H.N.”, on its own, is not descriptive. Indeed,
while the College provides printouts from AcronymFinder.com ostensibly
demonstrating that “R.H.N.” is known to mean “Registered Holistic Nutritionist,” I agree with the
CSNN that this evidence is unreliable, there being no indication of how
definitions are included on the site, or whether it reflects the Canadian
context
[34]
For “R.H.N. Registered
Holistic Nutritionist” and “R.H.N. Registered
Holistic Nutritional Consultant”, I agree with the College that the
inclusion of words with first letters directly corresponding with “R.H.N.”, placed adjacent to it makes it immediately
apparent, without any need for mental gymnastics, that “R.H.N.”
is an acronym that represents these words next to it. Since these words are
themselves clearly descriptive, so too will be the whole.
[35]
For “R.H.N. Holistic
Nutritionist”, where “R.H.N.” and the
words forming the rest of the Mark do not line up perfectly, I nevertheless find
that no complex decoding is necessary on the part of the consumer to determine
the meaning of the first part of the Mark. Like the College, I find that the
evidence demonstrates that, in the context of health services, consumers will
understand “R” to mean “registered.”
Although Mr. Cook is the Executive Director and Registrar of the College, and
therefore perhaps better acquainted with the health care environment, I find
that he is still sufficiently a member of the public such that his evidence on
this point is convincing. Moreover, while it is not clear from the evidence
how many consumers are directly familiar with the HPA or the College, I
find that this is largely irrelevant. It is not so much knowledge of this
precise legislation or of specific regulatory bodies that leads consumers to
associate “R” with “registered”
but, rather, the fact that such legislation and regulatory bodies exist,
contributing to an environment where consumers are regularly in contact with
many different professional titles that use “R”
to mean “registered” – e.g. “R.N.” for “registered nurse”,
“R.P.N.” for “registered
practical nurse” or “registered psychiatric
nurse”, “R.Ph.” for “registered pharmacist” etc. As such, in this
specific case, I find that, when reading “R.H.N.
Holistic Nutritionist”, the consumer will know immediately that “R” means registered and that the balance of the Mark
– that is, “H.N.” and “Holistic
Nutritionist” – correspond, making the whole descriptive.
[36]
All three of these above Marks are similar in
this respect to the marks in Chinese Medicine, where Justice O’Keefe
found, at para 218, that “the acronyms are not
distinguishable because of the type of descriptive phrase dominating the mark.”
This is so, despite the fact that graduates use these Marks along with the TM
symbol. While I agree with the CSNN that this symbol may show that terms
are proprietary rather than descriptive, I find that this would be the case
only if TM was used consistently or was integrated into the Mark
itself. This, however, is not the case here.
[37]
In the case of the fourth Mark which incorporates
both “R.H.N.” and text – “R.H.N. Holistic Nutritional Consultant” – I find that
the combination of the acronym at front and the specific words make it so that
the Mark, when read as a whole, is not clearly descriptive. While the consumer
would know immediately, because of the health services context, that the “R” in “R.H.N.” stands
for “registered,” the fact that the remaining
letters of the acronym – i.e., “H.N.” – do not
correspond to the remaining words – “Holistic
Nutritional Consultant” – would prevent the consumer from fully and
easily deciphering the acronym. It would no longer be instantly plain that
these letters stand for anything at all. Indeed, at best, the Mark is
suggestive.
[38]
I disagree with the College that the Mark would
still be descriptive because of the descriptive character of the balance of the
Mark – i.e., the text “Holistic Nutritional
Consultant.” The Mark must be read as a whole and, to the extent that
the court can view some parts of the Mark as being more important than others,
it would be “R.H.N.” since, according to
jurisprudence, it is the first portion of a mark that is generally considered
to create the strongest impression: Conde Nast at p 188; Pernod
Ricard v Molson Breweries (1992), 44 CPR (3d) 359 (FCTD) at 370; Molson
Companies Ltd v John Labatt Ltd (1990), 28 CPR (3d) 457 at p 461 (FCTD)). Since
“R.H.N.” in this case is clearly not
descriptive, the rest of the Mark is not either.
[39]
Finally, “R.H.N.”
on its own is also not clearly descriptive. As discussed above, “R.H.N.” has no independent meaning. Moreover, it
cannot be easily decoded when unaccompanied by other words. As above, I find
that the consumer, in a health services context, would know that the “R” stood for “registered”,
but there is no evidence that he or she would be able to identify the
significance of the remaining letters. This Mark therefore does not violate paragraph
12(1)(b) of the TMA.
(3)
Marks as Deceptively Misdescriptive
[40]
In addition to being descriptive, the College
submits that the Marks are also deceptively misdescriptive, contrary to paragraph
12(1)(b) of the TMA.
[41]
First, the College submits that the Marks are
likely to lead to the inaccurate belief that the associated services are
performed under governmental approval or authority. As explained by Mr. Cook,
many of the Marks use the term “nutritionist,”
which is near identical to the term “registered
nutritionist” regulated by the College – a governmental body – under the
HPA. Moreover, many of the Marks explicitly use the term “registered”, which the public associates with
regulated professional titles and is governmentally controlled in Alberta
pursuant to the HPA. As discussed above, this is also true of the “R” in “R.H.N.”, which
appears in all the Marks, since it stands for “registered.”
Additionally, “R.H.N.” is very similar to “R.N.” for “registered nurse”,
“R.P.N.” for “registered
psychiatric nurse” and “R.D.” for “registered dietician” – all acronyms, which are
governmentally regulated under the HPA and with which the public is familiar.
Some of these professions, such as registered nurses, in fact deal with
nutrition. The consumer might therefore believe that “R.H.N.”
is related, also being regulated by the government.
[42]
The College submits that confusion has in fact
occurred as a result of this deceptive misdescriptiveness. The College, which
regulates health professionals involved in diet, has received enquiries
regarding 47 individuals using the Marks by people asking whether they were
actually registered with the College. A list of these enquiries is attached to
Ms. Omerzu’s affidavit.
[43]
Second, the College submits that if the Marks do
not in fact mislead consumers into believing that the services with which they
are associated are subject to governmental approval, they are nevertheless
still deceptively misdescriptive because of their use of the term “registered” – or “R”
meaning “registered.” It points to the dictionary
definition for this word, the verb “register”
means “enter or record on an official list or directory.”
It further notes that there is no evidence in this case that the graduates are
in any way “registered.” Accordingly, it
submits, this word, which appears in all the Marks (either in full or as “R”) is inherently misleading.
[44]
The CSNN submits that the Marks are not
deceptively misdescriptive. It submits that the College has failed to provide
sufficient evidence demonstrating that the Marks mislead consumers to believe
that their associated services are subject to government approval or authority.
[45]
It says that overall, the evidence tendered
consists solely of the opinion of Mr. Cook, who, as previously noted, is the
Executive Director and Registrar of the College and, in so being, has great
familiarity with regulated terms and the health services context, making his
opinion atypical. As such, it says that there is no actual evidence that the
public will confuse the Marks with “registered
nutritionist.” There is also no evidence that the public is aware of
the HPA, the College, their roles or other governmentally regulated
professional titles using “registered” such that
the Marks’ use of “registered” would mislead
consumers to believe they are under governmental authority. That such
confusion might take place where the Marks do not even contain the actual word “registered” is still less clear given that, as noted
above, there is no evidence that the general public perceives the letter “R” as necessarily standing for “registered.” In any event, the CSNN submits that the
use of the word “holistic” in the Marks attenuates
any impression that “registered” (or “R” meaning “registered”)
suggests government supervision, since this word implies a non-traditional
health services context, not associated with governmental regulation.
Moreover, as testified to by its affiant Ms. O’Leary, nutritional counselling
or consulting is an unregulated profession in most parts of the world,
including Canada. As for the issues related to “R.N.”
for “registered nurse”, “R.P.N.”
for “registered psychiatric nurse” and “R.D.” for “registered
dietician”, the CSNN disputes that the College has provided any
evidence, other than the unfounded speculations of Mr. Cook, that these
professionals perform nutritional counselling, that the public is familiar with
this fact or with these terms more generally, or that, on this basis, the
public might confuse the Marks with these terms, believing that the Marks are
subject to government approval.
[46]
Moreover, the CSNN disputes that the College has
provided any valid examples of confusion of any kind by the public. The
enquiries noted in Ms. Omerzu’s affidavit were made by insurance companies, not
by the public. Moreover, any evidence regarding the nature or content of these
enquiries constitutes hearsay since the list provided by Ms. Omerzu includes no
such information. Had there in fact been so many instances of confusion, the
CSNN submits that the College would have pursued the graduates under section
129 of the HPA, which sets out fines for contravening section 128.
However, there is no evidence of any such proceedings.
[47]
Finally, with respect to the College’s
allegations that the Marks are generally deceptively misdescriptive because of
the use of “registered”, the CSNN submits that
the College has again failed to provide sufficient evidence. As above, the
CSNN argues that the dictionary definitions for “registered”
provided by the College are of time. Moreover, it says that there is no
evidence that where “registered” is absent, the
public will understand “R” to mean “registered” and where it is present that it would be
misleading to imply that the graduates are registered with the CSNN and its
branches.
[48]
I agree with the College and find that all of
the Marks violate paragraph 12(1)(b) because they are deceptively
misdescriptive.
[49]
First, I agree with the College that the Marks
mislead consumers to believe that the associated services are subject to
governmental authority or approval. Specifically, I find that the use
of the word “registered” – or “R” representing “registered,”
which applies in all instances of the Marks, as discussed above – implies
government approval or authority, which, in this case, does not exist. I find
Mr. Cook’s evidence on this point convincing and, in this instance, his
potentially greater knowledge of the health sector is useful in demonstrating
how “registered” is normally used in the health
industry. I do not find, as was suggested by the CSNN, that the use of “holistic”, being historically connected to
non-traditional fields of medicine, detracts in any material way from the
impression that the services associated with the Marks are subject to
government approval. As noted by the court during oral submissions, while this
may have been the case many years ago, this word has become more current and no
longer necessarily comes with these same connotations. In any event, the CSNN
has provided no evidence on this point. Additionally, as discussed above, I do
not find the lack of evidence regarding consumers’ familiarity with the HPA
or the College to be problematic. The very existence of the HPA and
others like, along with the College and similar bodies created under
legislation, contributes to an environment where there are many professional
healthcare titles which use “registered” – and “R” meaning “registered”
– to exclusively denote governmental regulation and with which the public
regularly come into contact.
[50]
Moreover, I find that the evidence of enquiries
made to the College regarding the CSNN’s graduates helps show that there has
been instances of confusion regarding governmental oversight of the services
associated with the Marks. While I acknowledge, as noted by the CSNN, that Ms.
Omerzu’s list provides no indication of the exact nature or content of these
enquires, I find that it is not inappropriate to infer that, if the public is
contacting the College to determine whether a given person using one or more of
the CSNN’s Marks is registered with it, then it means that they think it likely
that these Marks and/or the services associated with them are linked with a
governmental body. Though the CSNN notes that insurance companies rather than
individuals made these enquiries, it offers no explanation why this should make
a difference. Indeed, insurance companies, if anything, should be in an even
better position than members of the public to know, as CSNN submits, that the
Marks do not imply governmental supervision, as they ought to be more familiar
with the industry than the average person. The fact that they are still making
enquiries with the College shows that the Marks are indeed quite misleading.
[51]
Finally, even if the Marks did not suggest
governmental supervision, I agree with the College that the Marks are
nonetheless deceptively misdescriptive due to the inclusion of the word “registered” – or “R”
meaning “registered.” This word implies that
the person who provides services associated with the Marks is part of an
organization or whose name can be found on some type of record. Indeed, as
indicated by the College, the verb to “register”
is commonly known to mean to “enter or record on an
official list or directory.” In this case, however, there is no such
list or directory and no indication that graduates using the Marks are in
anyway “registered” with the CSNN, other than
possibly as alumni.
(4)
Acquired Distinctiveness of the Marks
[52]
Marks that are clearly descriptive or
deceptively misdescriptive, can be saved under subsection 12(2) of the TMA if
they have acquired distinctiveness. The relevant date for this assessment
would be the date of application for the Marks. Consequently, all use in
subsequent years must be discounted: Miranda Aluminum Inc v Miranda Windows
& Doors Inc, 2009 FC 669.
[53]
The CSNN submits that its Marks have acquired
distinctiveness pursuant to subsections 12(2) and 18(2) of the TMA. It
points out that distinctiveness exists where nothing about a mark refers the
customers to a multitude of sources. It can be both inherent – where a mark is
a unique or invented name such that it could only refer to one thing – or
acquired – where a mark has become known to consumers as originating from one
particular source through continual use in the market place: Tommy Hilfiger
Licensing Inc v Produits de Qualité IMD Inc, 2005 FC 10 [Tommy Hilfiger]
at paras 52-53. Whether a given mark is distinctive is a question of fact,
with the test being “whether a clear message has been
given to the public that the wares with which the trade-mark is associated and
used are the wares of the trade-mark owner and not those of another party:”
Tommy Hilfiger at para 58.
[54]
The CSNN submits that given their continual use
in the marketplace, the Marks meet the test for distinctiveness.
[55]
The CSNN submits that it can adopt its
graduates’ use as it meets the requirements of subsection 50(1) of the TMA;
there is a license between it and the graduates, and it has direct or indirect
control of the character or quality of the services.
[56]
With respect to the first requirement, the CSNN
acknowledges that written agreements exist only between the CSNN and its
branches. However, it says that licenses between the CSNN and graduates
nevertheless exist by implication because of the direct link between it
and the branches and the CSNN’s control over the graduates’ education. As
testified by the CSNN’s Executive Director and Registrar, Ms. O’Leary, it is
the CSNN who determines the content of the courses taught by the branches, the
way education services are offered, whether the branches remain to standard
(through periodic audits) and teacher training. It is also the CSNN that
creates, administers and grades the graduates’ final examinations.
Furthermore, the graduates commit themselves to the CSNN when they sign the
Code of Ethics, with failure to abide by this Code resulting in disciplinary
action, up to and including revocation of the right to use the Marks. This
authority, along with other examples of direct and indirect control – i.e.,
control over access to the practice, over use of the Marks before graduation or
in violation of the official standard of performance, over the scope of
graduates’ practice via the legal handbook and related misuses of the Marks
(e.g., contacting graduates illegally using terms forbidden in certain
provinces, such as “registered” in Alberta), and
over the provision of ongoing continuing education programs for graduates (e.g.
advance nutrition workshops) – also demonstrates the CSNN’s control over the
character and quality of the services associated with the Marks, as equally
demanded by subsection 50(1).
[57]
The CSNN submits that the use of the Marks by
the graduates has given them distinctiveness. This use has been both long-term
and extensive, with the CSNN’s schools having now existed for over 20 years and
having graduated over 5,500 students. The CSNN submits that its graduates
display the Marks when performing and advertising their services, identifying
themselves as certified by the CSNN and using the Marks to distinguish their
services from those of other dietary professionals. These services are of a
particular quality, delivered in a consistent and distinctive way, following
the CSNN’s specific approach to nutrition, which differs, from those of others
in the industry. While it is true that graduates sometimes offer these
services in their own style – e.g., incorporating Eastern philosophy – the CSNN
submits that doing so is common in other health care fields and other
professions (e.g. among lawyers) and has no bearing on whether services are
uniform or distinctive. Rather, the CSNN submits that the key is whether the
services are offered in the manner defined by the standard of performance – in
this case, by those who have completed the CSNN’s educational programme – and,
here, there is no evidence that they are not.
[58]
On the whole, the CSNN submits that, per the Tommy
Hilfiger test, a clear message has been given to the public that the
services with which the Marks are associated and used are the services of the
trade-mark owner and not those of another party. The evidence shows that
employers and clients recognize the Marks and seek out the CSNN’s graduates. Moreover,
while the CSNN disputes the use of the College’s printouts from Acronym.com, as
noted earlier, it states that, should the court take it into account, it should
also note that the inclusion of “R.H.N.” on the
site demonstrates that this Mark has gained sufficient distinctiveness to be
placed alongside other, extremely well-known acronyms, such as NASA and WHO.
[59]
The CSNN further submits that the fact that the
College has received enquiries from a few insurance companies, the nature and
content of which is hearsay, says nothing about whether actual consumers are
confused about the Marks and does not otherwise detract from the Marks’
acquired distinctiveness. Moreover, it says that the College has failed to
provide any evidence as to the use of designations by its own members or
establish a competing reputation that is substantial, significant or sufficient
so as to attenuate the CSNN’s distinctiveness: Bojangles' International LLC
v Bojangles Café Ltd, 2006 FC 657 at paras 33-34.
[60]
I am not persuaded that the Marks have acquired
distinctiveness pursuant to subsection 12(2).
[61]
I find that it is the graduates’ use of the
Marks that is the relevant use in this case and that the CSNN cannot adopt this
use, pursuant to subsection 50(1) of the TMA. I agree with the College
that CSNN has met neither of the provision’s two requirements. First, there are
no licenses between the CSNN and the graduates. Even if the Code of Ethics
could serve as the basis for a contract – which I do not find – there is no
evidence of signed copies or the ways in which the CSNN would go about – or has
gone about – enforcing this contract.
[62]
Second, I agree with the College that there is
insufficient evidence of either direct or indirect control by the CSNN over the
character or quality of the graduates’ services. While the CSNN mentions
continuing education programs, these do not seem to be mandatory nor, for that
matter, more than additional programs offered at the CSNN’s branches. The CSNN
also highlights the existing obligation for graduates to continue maintaining
services as taught during the course of education and the possibility of the
CSNN revoking the right to use the Marks for failure to do so. However, there
is no evidence of how the CSNN would go about – or has gone about – ensuring
that this obligation is met or revoking use of the Marks. The CSNN also
mentioned that it enforces legal requirements regarding the use of certain
marks in particular provinces – e.g., with respect to the prohibition against
using “registered” in Alberta. Such activities,
however, do not go to the “character or quality”
of the services, as required by subsection 50(1).
[63]
The CSNN emphasizes its involvement in creating
and administering the educational program taught by its branches – e.g., by
creating the curriculum and grading the exams – and making sure that only those
who meet the standard of performance – i.e. have completed the educational
program – use the Marks. This control, however, is not relevant to subsection
50(1) since it pertains only to controlling who gets to use the Marks rather
than how they are used. The only possible control in this case is the
continued effect of the education provided by the CSNN while the graduates were
still students. However, as noted, there is no evidence that the character or
quality of this training is maintained or that the CSNN makes any efforts to
ensure that this is the case.
[64]
Even if the requirements of subsection 50(1) of
the TMA had been met, I find that the use of the Marks by the graduates
has not led to these Marks acquiring distinctiveness. The evidence provided
does not demonstrate that the graduates are visually linking the Marks to the
services they provide such that a clear message has been given to the public
that these services are associated with the CSNN rather than another party. Moreover,
the evidence shows, as noted by the College, a real diversity in the types of
services offered – e.g., tied to weight loss, influenced by Eastern
philosophies, providing education – resulting in there being almost nothing
consistent about them. While it is true that the CSNN provided evidence of
third parties looking to hire graduates using the Marks, which might
demonstrate some acquired distinctiveness, this is tempered by the College’s
evidence of enquiries by insurance companies, which demonstrates a lack of
association between the Marks and the CSNN.
B.
Government Approval or Authority
[65]
Pursuant to paragraph 12(1)(e) of the TMA,
a mark cannot be registered – and its registration will be invalid under pargraph18(1)(a)
– if its adoption violates paragraph 9(1)(d), which prohibits the adoption of
any mark that consist of, or so nearly resembles as to
be likely to be mistaken for, any word or symbol likely to lead to the belief
that the goods 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.
[66]
The test to be applied emerges from Chinese Medicine at para 224, which asks
whether the mark is “likely to lead to the belief that the associated services
have received or are performed under government approval or authority.” The
College submits that the material date is the date of this court’s decision: Bank
of Montreal v Midland Walwyn Capital Inc (1998), 86 CPR (3d) 555 (TMOB) [Bank
of Montreal].
[67]
The submissions of the College mirror those advanced regarding the Marks’
invalidity under paragraph 12(1)(b) for being deceptively misdescriptive. Again,
the College emphasizes that it has already received numerous enquiries about
the registration of individuals using the Marks, demonstrating that these Marks
have in fact caused confusion to the public and an assumption or
expectation of government supervision – going beyond the test’s requirement to
show likelihood.
[68]
The CSNN contends that the material date is not
that of the court’s decision. It submits that paragraph 18(1)(a), which is the
basis of expungement, requires that the trade-mark be “not
registerable at the date of registration.” As such, the “date of registration” is the latest possible material
date and Bank of Montreal cannot be correct. In any event, the
authorities on which the TMOB based its finding in that case are
distinguishable, involving official marks registered under subparagraph
9(1)(n)(iii). Such marks are competing entries on the trade-marks register
and, accordingly, oppositions under this section are akin to allegations of
confusion with a registered mark – a completely different context from the
present one.
[69]
The CSNN submits that the material date for
assessing paragraph 9(1)(d) is the date of adoption (i.e., first use) – in this
case, 1995 for three of the Marks and 2009 for the two others. While it notes
that no cases have definitively made this finding, it argues that there are
decisions that have done so for paragraph 9(1)(k); namely, Bousquet v
Barmish (1991), 37 CPR (3d) 516 (FCTD) at pp 522-523; Miranda at
para 34; Miranda Aluminum Inc v Miranda Windows & Doors Inc., 2010
FCA 104), and for section 10; namely Chinese Medicine at para 125, which
it says are comparable provisions because allegations under paragraph 9(1)(k),
which prohibits marks that suggest a connection to a living individual, like paragraph
9(1)(d), which infers a connection to another party. It argues that just as in
paragraph 9(1)(k), the connection in paragraph 9(1)(d) must also exist at the
time of adoption in order for the mark to be prohibited.
[70]
The CSNN submits that because the material dates
for three of the five Marks is 1995, the College’s submissions, which rely
heavily on the existence of the HPA and the College itself, cannot apply
since this legislation was only enacted in 2000, and the College was created
only in 2002. As such, the CSNN says that the public would not have been confused
or misled by the use of “registration” or any
similarities between the Marks and the professional titles now-regulated under
the HPA.
[71]
Moreover, regardless of the question of material
dates, the CSNN submits that the College has failed to demonstrate that any of
the Marks are likely to lead to the belief that the associated services have
received or are performed under government approval or authority. First, it
notes that the College’s position is almost entirely founded on the mere
existence of the HPA. However, even if it were true that the Marks
violated that Act, it would not be sufficient because, as confirmed by the
Federal Court of Appeal in Lubrication Engineers at p 244, paragraph 9(1)(d)
does not import into federal law the various prohibitions against the use of
certain professional designations contained in provincial statutes.
[72]
Second, the CSNN submits that the College
tendered little to no evidence demonstrating that the Marks are likely to cause
confusion as to government authority. On this point, the arguments made by the
CSNN refuting the allegation of deceptive misdescriptiveness, above, apply
again. In particular, the CSNN stresses that the College has failed to provide
any instances of actual confusion involving patients, graduates or other
professionals despite 13 years of use in Alberta. The enquiries noted by Ms.
Omerzu in her affidavit involve only insurance companies and do not reliably
reveal anything about the state of mind of the public.
[73]
I find that the College has demonstrated that
two of the five Marks violate paragraph 9(1)(d) of the TMA at the
material date. As such, these Marks are not registrable under paragraph 12(1)(e)
and their registrations are invalid pursuant to paragraph 18(1)(a).
[74]
With respect to the material date, I agree with
the CSNN that it cannot be the date of the court’s decision given that paragraph
18(1)(a) places the last possible date at “the date of
registration.” While this is contrary to the finding in Bank of
Montreal, that decision was made on the basis of cases dealing with a different
context, as noted by the CSNN. In any event, it is not binding on this court.
[75]
Moreover, I am convinced that the material date
is the date of the Marks’ adoption – in this case, 1995 and 1996 – as proposed
by the CSNN. Although the case law does not speak definitively on this matter,
it considers other prohibitions under section 9 as they relate to paragraph 12(1)(e),
including the similar provision paragraph 9(1)(k). In those cases, the
relevant date is that of adoption. I find that the same applies here.
[76]
Therefore, I find that there is
insufficient evidence that three of the five Marks – “R.H.N.
Registered Holistic Nutritionist”, “R.H.N.”
and “R.H.N. Holistic Nutritionist” – were as
stated in Chinese Medicine, “likely to lead to
the belief that the associated services have received or are performed under
government approval or authority” at the date of adoption. While it is
possible that the Marks’ use of “registration” – and “R” standing for “registration”
– implied that their associated services were subject to governmental
supervision at that time, the College has simply provided no evidence regarding
health care services or public perception in the mid 1990s. Moreover, as
previously discussed, though precise knowledge of the HPA and the College
are unnecessary to demonstrate this connection between “registration” and
government approval, their existence – or the existence of something
like them – is necessary since they establish an environment where the public
comes into contact with regulated professional titles, which use the word
“registered” exclusively, and where there are bodies dedicated to overseeing
health care services of various kinds. Additionally, all evidence of actual
confusion - i.e. the enquiries made to the College – occurred after the
material date. Consequently, the available evidence is much less than what was
deemed insufficient in Chinese Medicine.
[77]
However, I do
find that the two remaining Marks – “R.H.N. Holistic Nutritional Consultant”
and “R.H.N. Registered Holistic Nutritional Consultant” – do meet the test
since their material dates are 2009, which comes after the enactment of the HPA,
the establishment of the College, and the occurrence of at least some of the
enquiries listed in Ms. Omerzu’s affidavit. The points made in the above
section regarding deceptive misdescriptiveness apply here.
C.
Distinctiveness
[78]
The College submits that the registration of a
trade-mark will be invalid pursuant to paragraph 18(1)(b), if it is not distinctive at the time proceedings are commenced bringing
the validity of the registration into question – in this case, February
11, 2014: Jean Patou Inc c Luxo Laboratories Ltd (1998), 158 FTR 16 at para
12.
[79]
To prove lack of distinctiveness under this
provision, the College submits that it is unnecessary for it to rely on any
proprietary right of its own or the existence of any rival marks. Rather, the
question is whether the marks distinguish the services with which they are
associated from those provided by other suppliers of such services: Chinese
Medicine at paras 130-131. In other words, is there a clear message given
to the public that the wares or services with which the trade-mark is
associated and used are the wares or services of the trade-mark owner and not
those of another party: Tommy Hilfiger at para 58. This, the College
says is a question of fact and the marks must be distinctive to all probable
users of the services, including the ultimate consumers, particularly where, as
here, the Marks do not consist of coined or invented words which are obviously
adapted to distinguish and therefore prima facie distinctive: Parke,
Davis & Co v Empire Laboratories Ltd (1963), 41 CPR 121 (Ex Ct), aff’d
43 CPR 2 (SCC); Standard Coil Products (Canada) Ltd v Standard Radio Corp,
[1971] 1 FC 106 (TD), aff’d 26 CPR (2d) 288 (FCA) at para 39.
[80]
The College says that the Marks do not fulfill
this test. As discussed above, the College argues that the Marks are clearly
descriptive or deceptively misdescriptive, and as such are not inherently
distinctive. Moreover, as previously discussed, the College denies that the
Marks have acquired distinctiveness such that they would be saved by subsection
18(2).
[81]
As discussed above, I have been persuaded by the
College that the Marks are clearly descriptive, and they have not acquired
distinctiveness and are not saved by subsection 18(2).
[82]
I find that all the Marks’ registrations are invalid
pursuant to paragraph 18(1)(b) because they were not distinctive at the time
the current proceedings were commenced.
[83]
As discussed earlier, the Marks are all used as
professional designations and although they are not, as a result, clearly
descriptive, they are used by the graduates to identify themselves rather than
distinguish the services associated with the Marks from those of others (i.e.
making them distinctive). As such, they violate
paragraph 18(1)(b) as they are not distinctive.
[84]
Additionally, as explained above, many of the
Marks are clearly descriptive overall. As such, by definition, I find that
they also lack distinctiveness.
[85]
Finally, while a lack of inherent
distinctiveness can be overcome by acquired distinctiveness, I find, as
discussed earlier, that none of the Marks have achieved such distinctiveness
and thus they cannot be saved by subsection 18(2).
D.
Abandonment and Non-Entitlement to
Register Marks Based on Use
[86]
The College attacks one of the Marks – “R.H.N. Registered Holistic
Nutritional Consultant” – on two additional grounds: that the CSNN has
abandoned it (paragraph 18(1)(c) of the TMA) and that the CSNN was not
the person entitled to register the mark (subsections 18(1) and 16(1) of the TMA).
[87]
To prove abandonment, the College must show
that: (1) the Mark is no longer in use; and (2) that the CSNN had the intention
of abandoning the Mark: See Tommy Hilfiger; Cross-Canada Auto Body Supply
(Windsor) Limited v Hyundai Auto Canada, 2007 FC 580 [Hyundai].
[88]
The College submits that both of these elements have been met. It says
that the only relevant use of “R.H.N. Registered
Holistic Nutritional Consultant” is the use by those providing the services – i.e., the students –
and that there is no evidence of such use. Although there is one instance of a
graduate using the phrase “Registered Holistic
Nutritional Consultant (R.H.N.)”, this does not
replicate the mark. Moreover, the College states that this Mark, while not
available in Alberta because of the provincial prohibitions against the word “registered,” is nevertheless available to graduates
in New Brunswick and Nova Scotia but there is no evidence of any use in either
of these provinces.
[89]
On the basis of this same evidence, the College
submits that the CSNN has also shown the requisite intent to abandon the mark.
[90]
The College acknowledges that in Hyundai,
the Federal Court found that the “smallest use”
of a mark will defeat a claim of abandonment; however, it submits that in this
case, not even a small use exists.
[91]
The College further submits that registering
marks based on use where the marks are not in fact in use by the date of application
is contrary to subsection 16(1) of the TMA, and therefore CSNN is not
the person entitled to secure the marks’ registration and the registrations are
invalid on this ground as well.
[92]
Furthermore, the
College submits that although the CSNN registered the mark “R.H.N. Registered Holistic Nutritional Consultant” on the
basis of first use in 1995, there is no evidence of any use of this mark before
or after this date because the relevant use is by the graduates rather than the
CSNN itself.
[93]
I find that neither ground raised by the College
justifies expunging the “R.H. N. Registered Holistic
Nutritional Consultant” Mark.
[94]
To establish abandonment, the College must first
show non-use of the mark. While it is true that there is no evidence of exact
usage, there are at least two examples that are quite close. In Penny
Ormsbee’s promotional materials, she uses “RHN”
at the top of the page and then, not much further down, “Registered Holistic Nutritional Consultant.” Likewise,
Jennifer King’s materials also contain all the components of the mark, only in
reverse order. As in Hyundai, this constitutes, in my view, the “smallest use” and is enough to defeat the College’s
allegation. I would also note that Penny Ormsbee is located in Nova Scotia, and
accordingly, there is no basis for the College’s claim that there is no use of the
Mark in that province.
[95]
Secondly, and more importantly, I find that the College
has provided no evidence of intent to abandon. As argued by the CSNN, this
element of the test is separate from the first and must also be shown in order
to show invalidity pursuant paragraph 18(1)(c). I am not prepared to infer
that CSNN has an intention to abandon the mark. In fact, the only evidence is
that the CSNN registered and maintained the mark and this leads to the opposite
conclusion.
E.
Entitlement to Register Marks and
Government Approval
[96]
The College says that when registering a mark,
applicants must submit a statement that they are entitled to use that mark in
Canada: TMA subsection 30(i). If the applicant is not in fact entitled
to do so, the mark’s registration will be invalid under paragraph 18(1)(d). The
College submits that one example of non-entitlement would be where the mark is
likely to lead consumers to believe that the services associated with it are
subject to government authority or approval, contrary to paragraph 9(1)(d). The
material date for making this determination will be the filing date of the
application – here, 2009 and 2010.
[97]
As discussed above, the College submits, in
this case, that the CSNN’s Marks violate paragraph 9(1)(d) of the TMA. In
addition, it emphasizes that the CSNN has admitted that it is and was aware of
the HPA in Alberta and similar legislation in other provinces. Given
the ways in which these statutes prohibit the use of certain terms and
regulates others, this it says causes the Marks to mislead consumers to believe
that the services associated with them are subject to governmental supervision.
As such, the CSNN could not or should not have been satisfied that it was
entitled to use the Marks pursuant to subsection 30(i), making the Marks’
registrations invalid under paragraph 18(1)(d).
[98]
The CSNN replies that subsection 30(i) of the TMA
speaks to entitlement to use a mark rather than to register it
and, as such, does not raise paragraph 18(1)(d) or any other ground pertaining
to the invalidity of the marks’ registrations. It quotes Fox on Canadian
Law of Trade Marks and Unfair Competition, 4th ed (Toronto:
Carswell, 2002) [Fox] for the proposition that, while “the innocent failure of an applicant to accurately state the
date of first use in compliance with s.30 may be a ground for opposition, but [it]
is not a ground for invalidating a registration.” Thus, it submits, any
allegations under this section are improper and must fail.
[99]
Additionally, the CSNN submits that paragraph 18(1)(d),
on its own, does not invoke paragraph 9(1)(d). Instead, it relates to sections
16 and 17 which deal with the various reasons why an applicant would be
disentitled to register a mark – i.e., because it was not used in Canada or
abroad, or because another party has previously used or filed an application
for a confusing mark, as alleged by that party.
[100] In any event, the CSNN submits that the Marks have not been shown to
violate paragraph 9(1)(d) because the College has failed to prove that any of
the Marks are likely to mislead consumers to believe that their associated
services are under government approval or authority.
[101] I agree with the CSNN that paragraph 18(1)(d), subsection 30(i), and
paragraph 9(1)(d) do not provide a basis for expunging the Marks.
[102] I agree with the CSNN that subsection 30(i) does not go to
entitlement to register. The focus of the provision’s text is entitlement to
use, not registration. Accordingly, subsection 30(i) does not invoke paragraph
18(1)(d) at all. The quotation from Fox provided by the CSNN is exactly
on point, stating quite definitively that this provision does not relate in any
way to expungement.
[103] Secondly, I agree with the CSNN that paragraph 18(1)(d), on its own,
would not invoke paragraph 9(1)(d), which speak to adoption rather than
registration. Rather, as explained by the CSNN, this section clearly invokes
the provisions surrounding it, namely sections 16 and 17, which deal explicitly
with entitlement to register.
Conclusions
[104]
Both of the commercial marks and all five of the
certification marks must be expunged from the register.
[105] The commercial marks are expunged on agreement of the parties.
[106] All five of the certification marks are deceptively misdescriptive
and thus not registrable pursuant to paragraph 12(1)(b) of the TMA. All
of the five certification marks were not distinctive at the time this
application was made and thus, pursuant to paragraph 18(1)(b) of the TMA,
their registrations are invalid.
[107] Three of the certification marks were clearly descriptive at the
date of registration – “R.H.N. Registered Holistic
Nutritionist,” “R.H.N. Holistic Nutritionist,”
and “R.H.N. Registered Holistic Nutritional Consultant”
– thus not registrable pursuant to paragraph 12(1)(b) of the TMA, and
their registrations, pursuant to paragraph 18(1)(a) are invalid.
[108] Two of the certification marks – “R.H.N.
Holistic Nutritionist,” and “R.H.N. Registered
Holistic Nutritional Consultant” – at the time of registration were
likely to lead to the belief that the wares or services with which they are
used have received governmental approval or authority contrary to paragraph 9(1)(d)
of the TMA and are thus not registrable pursuant to paragraph 12(1)(e)
and their registrations, pursuant to paragraph 18(a)(a) are therefore invalid.
[109] The College made no request for costs in its Notice of Application
or in its submissions; therefore no costs will be awarded.
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