Date:
20130312
Docket:
T-1600-11
Citation:
2013 FC 266
Ottawa, Ontario,
March 12, 2013
PRESENT: The
Honourable Mr. Justice Manson
BETWEEN:
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ONTARIO DENTAL ASSISTANTS ASSOCIATION
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Applicant
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and
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CANADIAN DENTAL ASSOCATION
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Respondent
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REASONS FOR JUDGMENT
AND JUDGMENT
[1]
This
is an appeal under section 56 of the Trade-Marks Act, RSC 1985, c T-13
[the Act] of a decision by the Trade-Marks Opposition Board [the Board] dated
July 25, 2011 [the Decision], allowing the respondent’s opposition to the applicant’s
application for the certification mark CDA [the mark] with respect to
application No. 1,265,950.
I. Background
[2]
On
July 22, 2005, the Ontario Dental Assistants Association [the applicant] filed
an application to register the certification mark CDA for the following defined
standard:
The persons by whom
the services are performed must be members of the applicant in good standing
and have achieved a pass mark on a certification examination for dental
assistants approved by the applicant, and in addition, the persons must have
successfully completed a dental assisting program approved by the applicant, or
have a certificate, diploma or degree in dental assisting, dental hygiene or
dentistry approved by the applicant (but not hold a certificate of registration
from any regulated health profession in any Canadian jurisdiction), or have
completed a verified minimum of two years full time practical experience as a
dental assistant or equivalent. This standard may be amended by the applicant
from time to time.
[3]
The
application was based on use in Canada since at least as early as 1965.
[4]
On
August 15, 2006, the Canadian Dental Association [the respondent] filed a
Statement of Opposition [the Opposition] against the application. On October 4,
2006, the applicant filed a Counterstatement denying the allegations in the
Opposition.
[5]
On
April 26, 2007, the respondent filed its evidence. The evidence consisted of
the affidavits of Bernard Dolansky, Ronald G. Smith and Deborah N. Stymiest.
[6]
On
June 7, 2007, the respondent filed an amended Statement of Opposition and on
October 15, 2007, the applicant filed an amended Counterstatement, denying the
allegations in the amended Statement of Opposition. Both parties filed a
Written Argument and attended at the oral hearing.
[7]
On
June 9, 2008, the applicant filed its evidence, consisting of the affidavit of
Judith Melville. The respondent did not file reply evidence.
[8]
The
decision of the Board dated July 25, 2011 allowed the opposition, and that
decision is the subject of this appeal.
[9]
No
additional evidence was filed on the appeal.
II. Issues
[10]
The
issues raised in the present application are as follows:
A. Did
the Board err in holding that a professional designation cannot function as a
certification mark?
B. Did
the Board err in finding that the applicant had not used the certification mark
CDA for the services listed in the application since the claimed date of first
use, namely as early as 1965?; and
C. Did
the Board err in finding that the applicant’s CDA mark is not distinctive in
light of the respondent’s use of the acronym CDA as used in respect of the
Canadian Dental Association?
[11]
The
respondent also relies on its grounds of opposition not addressed by the Board,
as being relevant to the issues of the certification mark being clearly
descriptive and non-distinctive, if I find that the Board erred on the three
issues raised above.
III. Standard of review
[12]
The
parties disagree regarding the appropriate standard of review for the first
issue. Relying on Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 at para
40 [Mattel], the applicant submits the standard of correctness applies
in cases dealing with an extricable question of law of general importance. The
applicant contends the first issue is such a question.
[13]
The
respondent submits that in Mattel, above, the Supreme Court did not
intend to change the test set out in Molson Breweries v John Labatt Ltd,
[2000] FCJ 159 at para 51 (FCA) [Molson] for the standard of review for
an appeal of a Board decision. Moreover, the respondent contends the portions
of Mattel upon which the applicant relies are obiter and, in any
case, the hypothetical scenario the Supreme Court provided in Mattel, at
paragraph 40, as an example where the correctness standard would apply, is distinct
from the case at hand.
[14]
I
agree with the respondent that the correct standard is one of reasonableness,
for all the issues raised in this appeal. The issue relating to whether or not
a professional designation can be a certification mark is a mixed question of
fact and law, reviewable on a reasonableness standard.
IV. Relevant dates
[15]
The
material date for determining compliance with section 30 of the Act is the date
the application was filed, namely July 22, 2005.
[16]
The
material date for considering distinctiveness is the date the opposition was
filed, namely August 15, 2006.
V. Onus
on the parties
[17]
While
the evidentiary burden for the opposition is on the opponent, the legal burden
or onus that the trade-mark is registrable remains on the applicant, on a
balance of probabilities (John Labatt Ltd v Molson Co), [1990] FCJ No
533, aff’d [1992] FCT No 525 (FCA)).
VI. Analysis
A. Did
the Board Err in Holding that a Professional Designation Cannot Function as a
Certification Mark?
[18]
In
order to answer this question, one must begin by considering the definition of
a certification mark, as defined in section 2 of the Act, and as contextually
construed within the relevant sections of the Act as a whole.
[19]
Section
2 of the Act reads:
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[…]
“certification
mark” means a mark that is used for the purpose of distinguishing or so as to
distinguish wares or services that are of a defined standard with respect to
(a)
the character or quality of the wares or services,
(b)
the working conditions under which the wares have been produced or the
services performed,
(c)
the class of persons by whom the wares have been produced or the services
performed, or
(d)
the area within which the wares have been produced or the services performed,
from
wares or services that are not of that defined standard;
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[…]
«
marque de certification » Marque employée pour distinguer, ou de façon à
distinguer, les marchandises ou services qui sont d’une norme définie par
rapport à ceux qui ne le sont pas, en ce qui concerne :
a)
soit la nature ou qualité des marchandises ou services;
b)
soit les conditions de travail dans lesquelles les marchandises ont été
produites ou les services exécutés;
c)
soit la catégorie de personnes qui a produit les marchandises ou exécuté les
services;
d)
soit la région à l’intérieur de laquelle les marchandises ont été produites
ou les services exécutés.
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[20]
As
the applicant has submitted, the relevant wording of the section to be focused
upon is:
“certification
mark” means a mark that is used for the purpose of distinguishing or so as
to distinguish wares or services that are of a defined standard with respect to…
(c)
the class of persons by whom the wares have been produced or the
services [are] performed… from wares or services that are not of that
defined standard
[Emphasis
added]
[21]
That
definition must be viewed in the context of the Act as a whole, in that, in
order to be a valid mark, any certification mark must be:
a) not clearly
descriptive or deceptively misdescriptive of the wares or services in
association with which it is used;
b) able to
distinguish the wares or services of a defined standard from wares and services
of others (ie. be distinctive);
c) not be used by
the certification mark owner, but only by authorized licensees, in association
with the performance of services, the production of wares or advertising the
wares or services of those licensees, at the date relied upon by the owner as a
date of first use;
d) not likely to be
confusing with any registered or previously applied for trade-mark, or
previously used trade-mark or trade name, in Canada; and
e) such that “use”
must be in accordance with section 4 of the Act with respect to services, which
requires that a trade-mark (and therefore certification mark) is deemed to be
used with services if it is used or displayed in the performance or advertising
of these services.
[22]
There
is nothing in the Act that precludes a valid certification mark from being
registered for a professional designation, if that mark meets the criteria set
out above, and to the extent the respondent relies upon previous case law to
support an opposite finding, in my opinion such reliance is incorrect. In fact,
counsel for both parties agreed during the hearing that a correct reading of
the relevant sections of the Act would, in the right circumstances, allow for a
valid registration of a professional association name or acronym, provided that
the name or acronym meets the criteria of the relevant provisions of the Act as
discussed above.
[23]
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.
[24]
I
do not, however, agree with the applicant that reference to the Trade-marks
Examination Manual of the Canadian Trade-marks Office, Section II. 7.5.5, to
support the argument that a professional designation can serve as a valid
certification mark, should be given much weight. It is not a legislative
authority and is outdated in terms of the position enunciated in that section.
[25]
Having
decided that a professional designation may be a valid certification mark, I
must now review the evidence relating to the claimed date of first use and
whether or not the applicant’s CDA acronym is distinctive. I will deal with the
other grounds of the Opposition not addressed by the Board, relating to
descriptiveness and non-distinctiveness, at the end of my decision.
B. Did
the Board Err in Finding that the Applicant Had Not Used the Certification Mark
CDA for the Services Listed in the Application Since the Claimed Date of First
Use, Namely as Early as 1965?
[26]
The
applicant argues that given the Board’s finding that a professional designation
cannot serve as a valid certification mark, at paragraphs 57 and 64 of the
Board’s decision, that an a priori finding has tainted or corrupted all
the Board’s review of the evidence relating to the applicant’s use of its CDA
mark, and with respect to the question of distinctiveness. I am directed to the
Board’s finding in paragraphs 59 and 64 of the decision:
59 Even
if the Mark, as a professional designation, could function as a certification
mark, I agree with the Opponent that the Applicant has not shown use of its
mark in association with Services pursuant to s. 4(2) of the Act for the
reasons that follow.
…
64 …The
[photographs of name bars worn by certified dental assistants that display the
mark after individuals’ names] could qualify as use of the Mark when worn by
certified dental assistants in carrying out their dental assisting services.
However, this would be use of the Mark to designate the dental assistants as
having met the criteria to call themselves CDAs rather than distinguishing the
services provided by these individuals. In other words, this would qualify
as use of the Mark as a professional designation which I have already found
cannot function as a certification mark.
[Emphasis
added]
[27]
The
applicant submits that since a professional designation can function as a
certification mark, the use of a professional designation by licensed users
(dental assistants), while performing the services, satisfies the “use”
requirements set out in subsection 4(2) of the Act. The applicant also argues
that a certification mark used or displayed in the advertisement of the
services will also satisfy the requirements of subsection 4(2) of the Act.
[28]
The
applicant submits that Ms. Melville’s affidavit “should be considered both for
what it says explicitly and for what inferences may properly be drawn from the
affidavit and what inferences may be drawn from the fact that the Respondent
elected not to cross-examine Ms. Melville”. The applicant relies on exhibits
attached to the affidavit, particularly Exhibits H, I and J, to substantiate
its claim that the mark has been used by its certified users since at least as
early as 1965. More specifically, evidence that the mark was displayed on name
bars worn by its certified users, while they provided dental assistant services
to members of the public in Ontario, is relied upon to demonstrate use of the
CDA acronym at the time dental assistants provided services to patients.
[29]
However,
Exhibits H and I to the Melville affidavit, being representative applications
for CDA certification, are dated 1997 and 2008 (Exhibit I) and dated 2001 and
2004 (Exhibit H). Both the application forms and certificates issued are
documents issued by the applicant to dental assistants, and do not constitute
use of the CDA acronym by licensees or certified users of the applicant. Also,
the dates do not show use as early as 1965, the claimed date of first use by
the applicant. Further, while Exhibit J shows a plaque of the applicant’s past
presidents’ names, no use of the CDA mark in association with services is
shown. Therefore, while the Melville affidavit claims that dental assistants
have used the CDA mark since as early as 1965, no support for this claim is
attached to the affidavit to corroborate the claim. Exhibits L and M show the
applicant’s own use of CDA, but not use by licensees, and while these exhibits
may show an ability to use CDA as a certification mark, they do not
evidence any actual use of CDA in association with services. Exhibits O and P
to the Melville affidavit also only show use by third party schools, not use by
licensees in association with services, as required.
[30]
The
applicant also relies on Exhibit N to evidence use of CDA, which shows two
samples of name tags worn by dental assistants, allegedly since as early as
1961. The submission is that given the name tags are worn at the time dental
assistants provide their services to patients, such “use” is deemed use of CDA
as a certification mark, at the time the dental assistants’ services are
provided. However, I find that the samples of name tags, at best, evidence
possible use of CDA to designate the dental assistants as being part of their
professional association, but not so as to distinguish the services they
perform.
[31]
The
applicant argues that given Ms. Melville was not cross-examined, I must treat
her statements as to use as being true. Bare allegations of such use, without
any valid evidence to support that use, do not, in my opinion, amount to facts
to properly support use of CDA as a certification mark since 1965 (Aerosol
Fillers Inc v Plough (Canada) Ltd, [1979] FCJ 250 at para 16 (FCTD)). This
is particularly true when the bulk of the Exhibits to Ms. Melville’s affidavit,
the only evidence provided by the applicant in the present case, do not point
to use by licensees at the relevant claimed date of first use. As the
respondent observes, not one license evidencing use since 1965 was offered by
the applicant, either before the Board or on appeal through any new evidence.
[32]
Thus,
I find that the applicant has not shown use of the CDA acronym as a
certification mark since as early as 1965.
C.
Did the
Board err in Finding that the Applicant’s Mark is not Distinctive in Light of
the Respondent’s Use of the Acronym CDA as Used in Respect of the Canadian
Dental Association?
[33]
Firstly,
the applicant contends that the Board gave insufficient weight to the Melville
affidavit by agreeing with the respondent that it was “wholly speculative” for
Ms. Melville to estimate that millions of patients had been served by certified
users of the mark in Ontario since 1961 and in not giving sufficient weight to
Ms. Melville’s statement that the mark CDA had become well known in Ontario as
designating dental assistant services provided by certified users. The
applicant also maintains that there was no basis for the respondent’s claim
that Ms. Melville’s statement was “wholly speculative”, particularly given that
the respondent did not cross-examine Ms. Melville on her affidavit. The
applicant submits that considering Ms. Melville also stated in her affidavit
that there are currently 7,500 certified dental assistants in Ontario, the
number of patients treated by certified dental assistants since 1961 is easily
in the millions.
[34]
Secondly,
the applicant asserts the Board misapplied the legal test provided in Bojangles'
International, LLC v Bojangles Café Ltd, 2006 FC 657 [Bojangles].
The applicant submits that the respondent’s occasional use of the acronym CDA
for the name of its organization does not distinguish the services performed by
the respondent from those of others, thereby being insufficient to satisfy the Bojangles
test to establish non-distinctiveness of the applicant’s mark based on the
respondent’s use of CDA.
[35]
Thirdly,
the applicant submits the Board erred in finding that the applicant’s services
overlap with the respondent’s services, given that the applicant’s certified
users use the mark to distinguish that his or her services are of a defined
standard, while the respondent uses the acronym as merely a short form for the
name of its organization, which is an association of dentists.
[36]
Even
if the respondent’s use of CDA could be held to be use of a trade-mark, the
applicant submits the use would be for association services for dentists, which
is fundamentally different from dental assistant services for the public. The
applicant contends that despite decades of co-existence in the dental
community, there is no evidence of actual confusion and that members of the
public, as well as dentists, are able to distinguish between the applicant’s
mark and the respondent’s acronym, given that the respondent’s acronym is
almost always used in association with the respondent’s full name.
[37]
The
respondent maintains it was reasonable for the Board to find that the
respondent’s use of CDA was sufficient to negate the distinctiveness of the
applicant’s CDA mark. With respect to the Melville affidavit, the respondent
submits it was not only reasonable, but also correct, for the Board to find
that it was speculative for Ms. Melville to estimate the number of patients
served by certified users to be in the millions, particularly in light of the
fact that Ms. Melville only occupied the position of Executive Director of the
applicant since September 2001.
[38]
The
respondent also submits it is well-established that the initials of a
trade-mark name can constitute a trade-mark (GSW Ltd v Great West Steel
Industries Ltd, 22 CPR (2d) 154 at 162 [GSW Ltd]) and that the use
of a trade-name by a third party can form the basis for an attack on the
distinctiveness of a trade-mark (Whole Foods Market IP, LP v Salba Corp NA,
2012 TMOB 5 at para 27).
[39]
Finally,
the respondent asserts the Board was both reasonable and correct to conclude
that the general public was exposed to the respondent’s use of CDA through both
publications targeting the general public and by virtue of the fact that dental
assistant services are only available in a dentist’s office, thereby showing
the overlap of the parties’ services in association with dental services
generally.
[40]
The
word “distinctive” is defined in section 2 of the Act:
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“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;
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«
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.
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[41]
As
stated above, the material time for determining the issue of distinctiveness is
the date the respondent filed the Opposition, namely August 15, 2006.
[42]
When
an opponent challenges a mark’s distinctiveness, the onus is on the applicant
to establish that its mark is adapted to distinguish or actually distinguish
its wares or services from the wares of services of others throughout Canada. The initial burden, however, is on the opponent to prove that another mark is known
to some extent in Canada and has a reputation in Canada that is “substantial,
significant or sufficient” so as to negate the distinctiveness of the mark
under attack (Bojangles at paras 25 to 34).
[43]
I
have carefully considered the evidence of Deborah Stymiest, Ronald Smith and
Bernard Dolansky, and the cross-examination transcripts of the three affiants.
Their evidence demonstrates use of CDA by dentists and their respective
associations, as well as by dental assistants, in New Brunswick, British Columbia and Ontario, for many years. Dr. Dolansky’s evidence also shows use of CDA
by the Canadian Dental Association as an acronym for the association across Canada, since as early as 1912. Further, Dr. Dolansky’s affidavit establishes use of CDA by
the respondent to communicate not only with its members, but also with the
public, as well as use of CDA by third parties in referring to the respondent,
through publications such as The National Post and The Globe and Mail,
as well as through material published on the internet.
[44]
There
is no question that dental services, provided by both the applicant and the
respondent, in association with the acronym CDA, involve overlap in respect of
the general services provided in dental care by both groups, who work together
in dental offices across the country.
[45]
I
find that on the facts before me that the respondent’s use of CDA, and their
reputation in CDA as a trade-mark and more particularly as a trade name, is
sufficient to negate the distinctiveness of the applicant’s CDA acronym in Canada
D. Grounds of Opposition’s not
Addressed by the Opposition Board
[46]
The
respondent relies on its grounds of opposition not addressed by the Opposition
Board, with respect to the applicant’s CDA certification mark: namely, that the
mark is i) clearly descriptive under paragraphs 38(2)(b) and 12(1)(b) of the
Act, and ii) non-distinctive, based on the undecided grounds of opposition,
namely that the CDA acronym of the applicant is not distinctive pursuant to
paragraph 38(2)(d) and section 2 of the Act, in that it does not distinguish
applicant’s services from those of the New Brunswick Dental Assistant’s
Association (NBDAA), the Newfoundland Dental Assistants Association (NDAA) and
the Certified Dental Assistants of British Columbia (CDABC).
[47]
With
respect to the opposition ground of the applicant’s CDA acronym being clearly
descriptive, there is a dispute as to whether the applicant relies on a
subsection 12(2) defence of acquired distinctiveness and justification for
using a clearly descriptive acronym, CDA, in Ontario alone, or in the whole of Canada. The applicant acknowledges CDA as an acronym for Certified Dental Assistants is
clearly descriptive of their services, but argues that due to acquired
distinctiveness under subsection 12(2), CDA is nonetheless registrable. The
applicant also argues that its certification mark application has been amended
to only claim such acquired distinctiveness in Ontario alone.
[48]
The
respondent denies any limited territory to Ontario, and says that the relevant
correspondence with the Trade-mark Office places no such limit on the amendment
accepted by the Office for the subsection 12(2) amendment.
[49]
I
agree with the applicant that if the other grounds of opposition had not
succeeded, this ground of opposition should be referred back to the Board for
reconsideration. However, based on my decision above, such is not the case.
[50]
With
respect to the grounds of non-distinctiveness not considered by the Board,
based on other provincial bodies’ use of CDA, again, I need not decide these
issues. However, if I am wrong with respect to my findings of non-use since
1965 or lack of distinctiveness based on the respondent’s use of CDA, I would
also return the matter back to the Opposition Board for redetermination of
these issues.
JUDGMENT
THIS
COURT’S JUDGMENT is that:
1.
The
applicant’s appeal is dismissed; and
2.
Costs
to the respondent.
"Michael D.
Manson"
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