A recent decision by the Trademarks Opposition Board serves as a reminder that use of protected professional designations such as "engineer" or "engineering" as a trademark or as part of a trademark must not mislead the public about the nature of the good and services or the qualifications of the professionals involved in providing those services.
Signify Holding B.V. sought to register the trademark FLUENCE BIOENGINEERING in association with a wide range of goods and services, including LED lighting systems, various engineering services, and agricultural research services. The application was opposed by Engineers Canada, the national organization representing twelve provincial and territorial associations responsible for regulating the practice of engineering in Canada.
In its decision, the Trademarks Opposition Board refused registration of the trademark on the basis that the mark was deceptively misdescriptive under the provisions of section 12(1)(b) of the Trademarks Act.
Engineers Canada argued that the term "Bioengineering" in the trademark falsely implied the involvement of licensed professional engineers, which could mislead the public, especially since the practice of engineering is a regulated profession in Canada. The evidence on record showed that Signify Holding B.V. "is not authorized by any of the Engineering Regulators to practice engineering in any jurisdiction in Canada".
The Trademarks Opposition Board ultimately refused the application on the basis that the trademark was deceptively misdescriptive of the persons employed in the production of the applied-for goods or in the performance of the services.
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