Section 12(1)(b) of the Canadian Trademarks Act provides that a trademark is not registrable if it is clearly descriptive or deceptively misdescriptive of the character or quality of its associated goods or services or the conditions of or persons employed in their production or place of origin. In the context of trademarks that are acronyms, the question is whether the ordinary purchaser would find as a matter of first impression that the acronym refers to words that are themselves clearly descriptive or deceptively misdescriptive. The decision of the Federal Court in College of Dieticians of Alberta v 3393291 Canada Inc (c.o.b. Canadian School of Natural Nutrition), 2015 FC 449 ("CSNN"), concerned a number of acronyms registered as certification marks alleged to be clearly descriptive or deceptively misdescriptive.
In CSNN, the College of Dieticians of Alberta sought an Order expunging five certification marks held by the respondent Canadian School of Natural Nutrition, namely the marks:
- R.H.N. Registered Holistic Nutritionist,
- R.H.N. Holistic Nutritionist,
- R.H.N. Holistic Nutritional Consultant, and
- R.H.N. Registered Holistic Nutritional Consultant (collectively, the "RHN Marks").
The College sought to invalidate the RHN Marks on grounds including that the certification marks were clearly descriptive or deceptively misdescriptive.
In response to arguments that the use of the RHN Marks as professional designations made them, of necessity, clearly descriptive, the Court relied on the decision of Mr. Justice Manson in Ontario Dental Assistants Association v Canadian Dental Association, 2013 FC 266, to find that the use of the RHN Marks as professional designations did not by that fact alone make them clearly descriptive. However, with respect to whether the RHN Marks were clearly descriptive overall, the Court found as follows:
- the acronym R.H.N. by itself was not clearly descriptive, because there was insufficient evidence to conclude that the acronym had a specific independent meaning that would be understood as a matter of first impression by consumers, and the acronym would not be easily deciphered or understood by consumers without significant "mental gymnastics";
- each of R.H.N. Registered Holistic Nutritionist, R.H.N. Holistic Nutritionist, and R.H.N. Registered Holistic Nutritional Consultant was clearly descriptive, as the meaning of R.H.N. in those marks would be clear as a matter of first impression when used in connection with the balance of the marks and would not need to be "decoded" by the consumer; and
- the mark R.H.N. Holistic Nutritional Consultant was not clearly descriptive because, when read as a whole, it would not be immediately apparent to the consumer what "H.N." in the acronym referred to and thus the whole of the mark could not be easily deciphered by the consumer.
Turning to the issue of deceptive misdescriptiveness, the Court found that all of the RHN Marks, by use of or reference to the word "registered", were likely to and had mislead consumers into believing that:
- the providers of the associated services would be found on some "list" or "record" kept by the School of Natural Nutrition or another entity, when in fact no such list or record existed; and
- the associated services were subject to governmental authority or approval, due in particular to the use of the word "registered" and/or the letter "R" representing "registered" in acronyms, when such services and their providers were not in fact regulated or otherwise subject to government approval.
For these reasons, the Court agreed with the College that all of the RHN Marks were deceptively misdescriptive of the associated services.
The Court found that none of the RHN Marks had acquired sufficient distinctiveness to remedy the fact that they were clearly descriptive and/or deceptively misdescriptive. Accordingly, the Court found that all of the RHN Marks were invalid and ordered that all of the RHN Marks be struck from the Trademark Register.
The Court's decision in CSNN provides some guidance on the application of section 12(1)(b) to acronyms. Additionally, the Court's conclusion that the certification marks R.H.N. and R.H.N. Holistic Nutritional Consultant were not clearly descriptive of a character or quality of the associated services but were deceptively misdescriptive of those services is an interesting result. In so holding, the Court focused on the question of whether the RHN Marks were likely to deceive the public rather than whether the marks in their entireties were in fact descriptive. The Court in CSNN did not refer to previous decisions that have found that in order for a mark to be deceptively misdescriptive under section 12(1)(b) of the Trademarks Act, the mark must first be found to be descriptive. It is not clear whether and on what basis the Court distinguished the previous cases and it remains to be seen how the courts will confront arguments relating to clearly descriptive and deceptively misdescriptive marks in similar circumstances, moving forward.
For further information regarding this topic, please contact a member of our firm's Trademarks group.
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