Canada's Federal Court of Appeal has recently dealt the
Canadian Council of Professional Engineers (CCPE) another blow
against its strategy of claiming an exclusive monopoly in the words
'engineer' and 'engineering', and opposing
trademark applications that include these words.
In Kelly Properties v Canadian Council of Professional
Engineers (2013 FCA 287), the applicant was seeking to
register the trademark KELLY ENGINEERING RESOURCES in connection
with "personnel employment services". The CCPE, which is
the umbrella organisation representing the various provincial and
territorial engineering associations in Canada, opposed the
application on various grounds. The primary ground of opposition
was that the mark was allegedly "deceptively
misdescriptive" in nature as the inclusion of the word
'engineering' within the trademark deceived consumers into
believing that the applicant employs licensed Canadian engineers,
which was not the case.
In the initial opposition proceedings within the Canadian
Trademarks Office, the Opposition Board rejected CCPE's
opposition and held, in a lengthy decision, that the mark was
registrable and was not deceptively misdescriptive. Rather, the
board held that the mark merely suggests that the applicant
provides resources either for those looking for jobs in an area of
engineering, or for engineering firms looking for personnel (who
may or may not be licensed Canadian engineers).
On appeal, the Federal Court overturned the board's decision
and rejected the application as a result of additional affidavit
evidence filed by the CCPE. In particular, the trial judge held
that new evidence relating to the interpretation and scope of
provincial legislation that governs the practice of engineering in
Alberta would have had a material effect on the board's
decision. As a result, the trial judge held that he need not give
deference to the board's decision and, further, held that the
evidence established that the mark was deceptively misdescriptive
In its decision, the Federal Court of Appeal held that the trial
judge had committed a palpable and overriding error by finding that
the evidence would have had a material effect on the board's
decision. The Court of Appeal considered the additional material
relating to provincial legislation governing the practice of
engineering in Alberta to be irrelevant as it was merely opinion
evidence interpreting the meaning of the statute. In view of this,
the standard of review should have been whether the board's
decision was "reasonable", and the Court of Appeal found
that the board's decision was not unreasonable.
What is to be learned from this decision?
First, oppositions brought by the CCPE against Canadian
trademark applications that include the word 'engineer' and
'engineering' can be successfully defended with suitable
evidence. While the CCPE had been successful in many other cases,
the Court of Appeal's decision is consistent with recent
oppositions in which the CCPE failed in its oppositions against the
marks COMSOL ENGINEERING LAB for software, and ENGINEERING
EXCELLENCE IS OUR HERITAGE for brake parts, on the basis that these
marks were deceptively misdescriptive due to the applicants not
employing Canadian licensed engineers.
Second, the Court of Appeal's decision underscores the
difficulties in appealing decisions of the Opposition Board, and
the need for parties to put their best foot forward at the outset.
While additional evidence can be filed on appeal to the Federal
Court, it is often very difficult to establish that the additional
evidence would have had a material effect on the board's
decision or that the board's decision was unreasonable.
Third, it can be valuable to rely upon more than one filing
ground within a Canadian application, if alternative grounds are
available. In this case, the applicant had filed the application
based upon both use in Canada as well as use and registration in
the United States. While the board held that the applicant's
claimed date of first use in Canada was incorrect, the opposition
was nevertheless rejected as the reliance upon use and registration
in the United States was an independent, alternative filing basis
that was sufficient for the registrability of the mark.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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