The Canadian Intellectual Property Office has initiated two short consultations (January 29 to February 28, 2010) for proposed Practice Notices regarding section 12(1)(b) of the Trade-marks Act. Section 12(1)(b) provides that “a trademark is registrable if it is not, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin”. The two proposed Practice Notices address the application of 12(1)(b) to professional designations and to abbreviations, acronyms and initials.
If research discloses that an applied for trademark consists of a professional designation, the examiner will apply a first impression test to determine whether a consumer would assume the goods and services are produced by a professional with a designation similar to the applied-for trademark and if so, the trademark will be unregistrable, being clearly descriptive of the persons employed in the production of the wares and services. The addition of an abbreviation, acronym or initial to the professional designation will not make the trademark registrable.
A trademark that consists of or contains an abbreviation, acronym or initial will be considered unregistrable if considered as a whole and if as a matter of first impression the abbreviation, acronym or initial is clearly descriptive or deceptively misdescriptive of the wares and services. Moreover, the addition of an abbreviation, acronym or initial to a clearly descriptive word or phrase will not render it registrable as a trademark.
The changes arise in light of a recent Federal Court decision, College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Nature Medicine College of Canada, that considered some 39 trademark applications and registrations containing abbreviations, acronyms and initials and allegedly confusing with certain professional designations.
The Plaintiff, a provincial body set up under British Columbia’s Health Professions Act to regulate the practice of traditional Chinese medicine and acupuncture, granted and controlled the use of various titles, including Doctor of Traditional Chinese Medicine (Dr. TCM) and Registered Acupuncturist (R. Ac.). The Defendant was set up as a non-profit company under federal legislation and created educational programs and examinations in the field of traditional Chinese medicine which were offered by private schools. The Defendant also proceeded to apply for and register trademarks for the various educational programs and licence graduates of the programs to use the trademarks. The trademarks the Defendant registered included D.C.T.M. (DOCTOR OF TRADITIONAL CHINESE MEDICINE), REGISTERED D.P.C.M., D.P.C.M. (DOCTORATE IN PHILOSOPHY IN CHINESE MEDICINE), R. AC (REGISTERED ACUPUNCTURISTS). There were a total of some 39 marks, some registered, some only applied for, although 24 of the marks were not ruled on by the Court because they were not set out in the Statement of Claim.
Extensive evidence was lead regarding the regulation of traditional Chinese medicine and, more importantly, the licences granted by the Defendant, the Defendant’s assertion that the Plaintiff was infringing its trademarks and the confusion arising in respect of the use of the trademarks by the Defendant’s licencees.
The Court agreed that the matter could proceed by summary trial and accepted the Plaintiff’s argument that the marks were contrary to section 12(1)(b) of the Act, being clearly descriptive or deceptively misdescriptive at the time they were applied for. The Court noted that terms such as Dr. TCM and D.T.C.M. had been used in Yellow Page advertisements since 1995 to refer to a doctor of traditional Chinese medicine and trademarks such as REGISTERED D.P.C.M. were so similar that they remained descriptive, particularly when REGISTERED had been disclaimed.
Moreover, the Court was not convinced that the acronyms served to distinguish any of the trademarks because there was also a descriptive phrase dominating the trademarks. The Court concluded that an everyday user, faced with the acronyms and descriptive phrases, would conclude that doctors and acupuncturists delivering services in association with the trademarks were regulated as a professionals. Thus, the marks were not registrable. The Court then went on to find that the marks were contrary to section 10 of the Act (which prohibits adoption as a trade-mark of a mark that has by ordinary commercial usage become recognized as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services), as well as 7(d) of the Act (which prohibits a person from using a description in association with wares or services that is false in a material respect or likely to mislead the public).
Thus, the Defendant’s attempt to circumvent a provincial regulatory body by registering and licensing trademarks that appeared to be professional designations was not acceptable as a matter of trademark law. To ensure that the Trade-marks Office does not approve similar marks in the future, CIPO is seeking to clarify in the proposed Practice Notices just when professional designations and acronyms will be contrary to section 12(1)(b).
