A recent decision of the Federal Court1 determined
whether copyright subsisted in five-digit codes and considered the
elements of a valid certification mark.
The Respondent Denturist Association of Canada ("DAC")
owned copyright registrations relating to its Procedure Codes and
Fee Guides which included five-digit numerical codes, a description
of services to be associated with the numerical codes (the
"Codes") and possible fees. The five-digit Codes
identified the services denturists performed when submitting claims
to insurance companies or third party payers. The Procedure Codes
and Fee Guides were licensed to DAC's provincial associations
(including the Respondent Denturist Association of Ontario
("DAO")), and those provincial associations were
authorized to use and reproduce portions of the Procedure Codes and
Fee Guides. DAC also owned a trade-mark registration for the
certification mark "DD" for denturist services.
The Applicant Denturist Group of Ontario ("DGO") is a
not-for-profit professional association of denturists licensed to
practice in Ontario and it was set up as an alternative to DAC. DGO
is not a member of DAC; instead, DAC viewed DGO as a competitor for
DAC accused DGO and its members of using the Procedure Codes and
Fee Guides without DAC's authorization. DAC attempted to pursue
DGO and its members for the payment of fees claiming copyright in
the Procedure Codes and Fee Guides used for billing, and for the
right to use the professional designation "DD".
In response, DGO sought to invalidate DAC's registered
copyrights and its certification mark
The Court considered the validity of the copyright in the
Procedure Codes and Fee Guides as well as the five-digit Codes. It
also assessed the validity of the certification mark
"DD", in order to determine whether DGO was liable for
Copyright in five-digit codes
In assessing whether sufficient originality, skill and judgment
subsisted in the five-digit Codes thus rendering them subject to
copyright, the Court considered evidence as to the creation,
purpose and historical use of the Codes. The Codes and the
descriptions of the services were seen as primarily functional as
they distinguished denturist service fee codes from codes used by
dentists in Canada. They were also required by insurers and service
providers in order for all denturists in Ontario to be paid for
services rendered to patients. Further, the Codes have been used
for decades by denturists, whether they are members of DAC or DAO
As copyright did not subsist in the five-digit Codes and service
descriptions, and given the use made by DGO of the DAC Fee Guides
and Procedure Guide (which the Court found were valid copyrighted
works), the copyright infringement claims of DAC failed.
Certification marks are a type of trade-mark which are used to
show that certain goods or services meet an established
In this case, the certification mark "DD" was derived
from "Diploma in Denturism". DGO argued that the
"DD" mark could not be valid as it had always been
clearly descriptive of the professional designation "Diploma
in Denturism" used by all licensed denturists in Ontario,
whether or not the denturists were members of the certification
mark owner DAC, or its exclusive licensee in Ontario, DAO.
The Court found no evidence to show that the "DD"
certification mark was clearly descriptive at the material date;
however, the evidence demonstrated that the mark was not
distinctive of DAC. "DD" had become the "public
face" of the profession and there was significant use of the
"DD" designation for a number of years by graduates who
were not members of DAC (or its licensed members). The common
impression in the profession was that "DD" was the
professional designation for all denturist graduates, whether or
not they belonged to a professional association like DGO or a
licensee of DAC.
Accordingly, the certification mark was not distinctive of DAC
and therefore it was not an infringement for DGO members to use the
mark without a license from DAC.
As a result, DGO's application to strike the "DD"
certification mark from the Register of Trade-marks was successful,
the DAC copyright registrations stood and DGO was held not to have
infringed the copyright owned by DAC.
Given the split success of the parties, the Court refused to
award aggravated punitive or exemplary damages, but awarded damages
to DGO in the amount of $10,000 (and costs).
1 Denturist Group of Ontario v. Denturist Association of
Canada, 2014 FC 989.
The foregoing provides only an overview and does not
constitute legal advice. Readers are cautioned against making any
decisions based on this material alone. Rather, specific legal
advice should be obtained.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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