Date: 20040421
Docket: T-595-02
Citation: 2004 FC 586
Ottawa, Ontario, this 21st day of April, 2004
Present: THE HONOURABLE MR. JUSTICE O'REILLY
BETWEEN:
CANADIAN COUNCIL OF PROFESSIONAL ENGINEERS
Applicant
and
JOHN BROOKS COMPANY LIMITED
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1] John Brooks Company Limited (JBCL), specializes in distributing sophisticated spray equipment and related fittings and devices. JBCL wanted to register a trade-mark for the business that contained the words "Brooks Brooks Spray Engineering" and looked like this:
[2] The Canadian Council of Professional Engineers (CCPE) opposed JBCL's trade-mark on numerous grounds, all of them arising from its concern over the use of the word "engineering" in JBCL's proposed trade-mark. JBCL is not an engineering firm, although it employs some persons with engineering backgrounds or professional qualifications. CCPE argues that the public interest, as well as the prevailing law, requires that the term "engineering" be used exclusively by professional engineers.
[3] After a hearing, a panel of the Trade-marks Opposition Board dismissed all of CCPE's arguments opposing JBCL's trade-mark application: Canadian Council of Professional Engineers v. John Brooks Co., [2002] T.M.O.B. No. 18. CCPE appeals the Board's decision under s. 56 of the Trade-marks Act, R.S.C. 1985, c. T-13, and asks me to reverse that decision. I agree that the Board erred on one of the grounds put forward by CCPE and will allow the appeal on that basis.
I. Issues
[4] CCPE presented four issues:
1. Did JBCL fail to show that it was satisfied it was entitled to use its proposed trade-mark in respect of its services, as required by s. 30(i), Trade-marks Act?
2. Is JBCL's proposed trade-mark unregistrable because it is either clearly descriptive, or deceptively misdescriptive, of JBCL's services or personnel?
3. Is JBCL's proposed trade-mark unregistrable because it is not distinctive?
4. Is JBCL's proposed trade-mark unregistrable because it is misleading?
[5] While I find CCPE's arguments persuasive only in respect of the second issue, I will address all four questions, albeit briefly.
II. Analysis
[6] The parties agree that I should overturn the decision of the Board only if its decision was unreasonable, unless I find that there is new, probative evidence before me that would have affected the Board's conclusion on a particular issue. In that case, I should decide whether the Board's decision on that issue was actually correct: Molson Breweries, a Partnership v. John Labatt Ltd., [2000] F.C.J. No. 159 (QL) (F.C.A.).
A. Did JBCL fail to show that it was satisfied it was entitled to use its proposed trade-mark in respect of its services, as required by s. 30(i), Trade-marks Act?
[7] A person applying for a trade-mark must include in the application "a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the wares or services described in the application" (Trade-marks Act, s. 30(i)). JBCL included the necessary statement in its application, but CCPE argues that the statement could not have been genuine because JBCL must have known that it was not entitled to describe itself as an engineering company, given provincial laws limiting use of that professional description. A company cannot obtain a trade-mark that includes a term or name that is clearly prohibited by law: Canada Post Corp. v. Sprint International Communications Corp. (1997), 75 C.P.R. (3d) 39; Canada Post Corp. v. Superior Envelopes, Direct Mail Services, Data Services, a Division of Envocorp. Inc. (1997), 82 C.P.R. (3d) 257 and Canada Post Corp. v. Registrar of Trade Marks, [1991] F.C.J. No. 1270.
[8] The Board dismissed CCPE's argument on this point, primarily because there was no evidence before it showing that JBCL was not registered or licensed as a professional engineering firm or that it does not employ professional engineers. CCPE tendered fresh evidence before me in an attempt to address the issue. In fact, JBCL concedes that it is not registered or licensed as a professional engineering firm, but states that, where appropriate, its duly licensed professional engineers serve clients' needs for those kinds of services.
[9] Use of the term "engineering" in a business name is regulated, not prohibited. In Ontario, for example, a business may use the term "engineering" in its name or in a description of services if it has a certificate of authorization to do so. A business that does not have a certificate of authorization can still use the word "engineering" in its name, so long as it would not create the impression that it is offering professional engineering services (Professional Engineers Act, R.S.O. 1990, c. P. 28, s. 40(3)). Turning to the requirements of s. 30(i) of the Trade-marks Act, a company applying for a trade-mark could be satisfied that it was entitled to use the term "engineering" in its business name as long as it was careful not to mislead the public about its services. That is precisely what JBCL argues here; that is, that its proposed trade-mark is not misleading. I am prepared to accept, therefore, that JBCL could have been satisfied at the time it applied to register its proposed trade-mark that it was entitled to use the term "engineering" in its business name.
[10] Accordingly, considering all the evidence put before me, I find that the Board correctly dismissed CCPE's argument based on s. 30(i) of the Trade-marks Act.
B. Is JBCL's proposed trade-mark unregistrable because it is either clearly descriptive, or deceptively misdescriptive, of JBCL's services or personnel?
[11] A business cannot register a trade-mark that is "clearly descriptive" or "deceptively misdescriptive" of the character or quality of the services it offers or of the persons providing them (Trade-marks Act, s. 12(1)(b)). CCPE argues that JBCL's proposed trade-mark is either one or the other.
[12] In separate proceedings before the Trade-marks Opposition Board, JBCL sought to register the words "Spray Engineering" as a trade-mark for its wares. In that case, also opposed by CCPE, the Board found the proposed trade-mark to be either clearly descriptive or deceptively misdescriptive on the grounds that users of JBCL's wares would likely assume that engineers were involved in their production. If that were true, then the words "spray engineering" would be clearly descriptive of the persons employed in producing the company's goods. If it were not true, then those words would be deceptively misdescriptive of those persons (Canadian Council of Professional Engineers v. John Brooks Co., [2001] T.M.O.B. No. 218).
[13] Here, the Board concluded that even though the words "spray engineering" were clearly descriptive or deceptively misdescriptive, the addition of the words "Brooks Brooks" changed things. As a whole, the proposed mark was not clearly descriptive or deceptively misdescriptive of the character of JBCL's services. The Board compared "Brooks Brooks Spray Engineering" with the trade-mark "Labatt Extra". In a case involving the latter, Cattanach J. concluded that neither "Labatt" nor "Extra" was registrable as a trade-mark on its own, "Labatt" being merely a surname and "Extra" being clearly descriptive. However, when the two were combined, they formed a registrable trade-mark: Molson Companies Ltd. v. John Labatt Ltd., [1981] F.C.J. No. 925 (QL) (T.D.).
[14] Accordingly, the Board in this case concluded that, while "spray engineering" may be clearly descriptive or deceptively misdescriptive, the words "Brooks Brooks Spray Engineering" were not. In fact, the Board felt the case for JBCL's proposed trade-mark was stronger than the case for "Labatt Extra" for two reasons: First, it had no evidence that "Brooks" was primarily a surname and, second, it was unlikely that a consumer would think that "Brooks Brooks" was a person's name.
[15] In addition, the Board found that JCBL's proposed trade-mark was not clearly descriptive or deceptively misdescriptive of the persons involved in providing JBCL's services. However, there was no evidence before the Board that JBCL did not employ engineers. Nor was there any evidence showing that JBCL was not a duly accredited engineering firm. As noted above, JBCL concedes that it is not registered or licensed to provide engineering services, and confirms that it does employ some engineers. CCPE also tendered some fresh evidence on this issue. It provided affidavits stating that:
. It is common for firms, including engineering firms, to use a combination of surnames in their business titles.
. The word "Brooks" is a common surname.
. The word "spray" can be found in many engineering contexts, according to a search of relevant texts and literature.
[16] In addition, as mentioned, CCPE submitted evidence relating to the regulation of the term "engineering" in provincial laws.
[17] CCPE argues that this evidence is relevant and probative on the issue whether JBCL's proposed trade-mark is clearly descriptive or deceptively misdescriptive.
[18] In my view, the fresh evidence, including information relating to regulation of the term "engineering", is relevant and would have materially affected the Board's decision on this issue. In light of that evidence, I find that the Board's decision was incorrect. The proposed trade-mark "Brooks Brooks Spray Engineering" is deceptively misdescriptive of JBCL's services and the persons providing them. However, the evidence does not show that the proposed trade-mark is clearly descriptive since JBCL employs relatively few engineers.
[19] JBCL argues that it is only using the word "engineering" in its ordinary sense, referring to the use of skill or art in a particular field of activity. It is not using it in the professional sense. However, given that use of the term "engineering" is regulated by law, JBCL's argument is unpersuasive. The situation is different here than in respect of other registered uses of the word "engineering" cited by JBCL (e.g. "document engineering", "engineering sunglasses", and "body engineering"). In those cases, there is little chance that consumers would be misled into thinking that professional engineers are associated with the business. While "spray engineering" may not be a recognized field of speciality in the engineering profession, those words connote a range of sophisticated technical services related to fluid handling and distribution and, therefore, a connection with the kinds of services one might expect professional engineers to provide.
[20] In my view, the very fact that the term "engineering" is closely regulated has implications here. Most people would assume that businesses using that word in their name offer engineering services and employ professional engineers, unless the context clearly indicated otherwise. The Board itself arrived at a similar conclusion when it refused to register JBCL's proposed trade-mark "Spray Engineering" on the grounds that the average client of JBCL would assume that engineers were involved in all or most of the business's activities: Canadian Council of Professional Engineers v. John Brooks Co., [2001] T.M.O.B. No. 218.
[21] If part of a proposed trade-mark is objectionable, the question arises whether the whole can still be registered. Here, given that JBCL cannot register "Spray Engineering", can it register "Brooks Brooks Spray Engineering"? The answer depends on whether the objectionable part of the proposed trade-mark forms a significant part of the whole and, therefore, causes it to remain deceptively misdescriptive. The parties differed on the question whether the offensive part of the trade-mark must be the dominant element of it or merely a dominant feature. As I read the case law, the proper test is whether the deceptively misdescriptive words "so dominate the applied for trade mark as a whole such that . . . the trade mark would thereby be precluded from registration . . .": Chocosuisse Union des Fabricants - Suisses de Chocolate v. Hiram Walker & Sons Ltd., (1983), 77 C.P.R. (2d) 246 (T.M.O.B.), citing Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103.
[22] Here, the words "spray engineering" clearly dominate the proposed trade-mark. Given that those words are deceptively misdescriptive of JBCL's services and personnel, the proposed trade-mark "Brooks Brooks Spray Engineering" cannot be registered.
C. Is JBCL's proposed trade-mark unregistrable because it is not distinctive?
[23] CCPE argues that JBCL's proposed mark is not distinctive because it does not identify services that are distinct from those offered by engineers in the provinces where JBCL operates. In particular, it states that there are engineers with the surname "Brooks" and "Spray" in those jurisdictions and, therefore, "Brooks Brooks Spray Engineering" could refer to an engineering firm formed by persons with the surnames "Brooks" and "Spray".
[24] This argument is rather speculative. I do not see any evidence suggesting that the proposed trade-mark would not distinguish JBCL's services from other firms' operations.
D. Is JBCL's proposed trade-mark unregistrable because it is misleading?
[25] CCPE argues that JBCL's proposed trade-mark is misleading because the terms "engineering" and "spray engineering" have been used commercially to describe professional engineering services. As such, CCPE suggests that JBCL's proposed use of them is misleading according to s. 10 of the Trade-marks Act.
[26] On the facts of this case, this issue is co-extensive with the question whether the proposed trade-mark is deceptively misdescriptive. Having decided that already, it is unnecessary to say anything more about it.
III. Conclusion
[27] I am satisfied on the basis of all the evidence before me and the prevailing case law that JBCL's proposed trade-mark is deceptively misdescriptive of JBCL's services and the persons providing them. Therefore, I must allow this appeal. The parties may make written submissions on the matter of costs within ten (10) business days of this judgment.
JUDGMENT
THIS COURT'S JUDGMENT IS that:
1. This appeal is allowed;
2. The parties may make written submissions on the matter of costs within ten (10) business days of this judgment.
"James W. O'Reilly"
J.F.C.
Annex
| Trade-marks Act, R.S.C. 1985, c. T-13
10. Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trade-mark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor.
12. (1) Subject to section 13, a trade-mark is registrable if it is not ... (b) 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;
30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing ... (i) a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months. (2) An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court. (3) The appellant shall, within the time limited or allowed by subsection (1), send a copy of the notice by registered mail to the registered owner of any trade-mark that has been referred to by the Registrar in the decision complained of and to every other person who was entitled to notice of the decision. (4) The Federal Court may direct that public notice of the hearing of an appeal under subsection (1) and of the matters at issue therein be given in such manner as it deems proper. (5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
Professional Engineers Act, R.S.O. 1990, c. P. 28 Idem, services of professional engineer 40. (3) Every person who is not acting under and in accordance with a certificate of authorization and who, (a) uses a term, title or description that will lead to the belief that the person may provide to the public services that are within the practice of professional engineering; or (b) uses a seal that will lead to the belief that the person may provide to the public services that are within the practice of professional engineering, is guilty of an offence and on conviction is liable for the first offence to a fine of not more than $10,000 and for each subsequent offence to a fine of not more than $25,000. R.S.O. 1990, c. P.28, s. 40 (3).
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Loi sur les marques de commerce, L.R. 1985, ch. T-13
10. Si une marque, en raison d'une pratique commerciale ordinaire et authentique, devient reconnue au Canada comme désignant le genre, la qualité, la quantité, la destination, la valeur, le lieu d'origine ou la date de production de marchandises ou services, nul ne peut l'adopter comme marque de commerce en liaison avec ces marchandises ou services ou autres de la même catégorie générale, ou l'employer d'une manière susceptible d'induire en erreur, et nul ne peut ainsi adopter ou employer une marque dont la ressemblance avec la marque en question est telle qu'on pourrait vraisemblablement les confondre.
12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants : [...] b) qu'elle soit sous forme graphique, écrite ou sonore, elle donne une description claire ou donne une description fausse et trompeuse, en langue française ou anglaise, de la nature ou de la qualité des marchandises ou services en liaison avec lesquels elle est employée, ou à l'égard desquels on projette de l'employer, ou des conditions de leur production, ou des personnes qui les produisent, ou du lieu d'origine de ces marchandises ou services;
30. Quiconque sollicite l'enregistrement d'une marque de commerce produit au bureau du registraire une demande renfermant :
[...] i) une déclaration portant que le requérant est convaincu qu'il a droit d'employer la marque de commerce au Canada en liaison avec les marchandises ou services décrits dans la demande. 56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois. (2) L'appel est interjeté au moyen d'un avis d'appel produit au bureau du registraire et à la Cour fédérale. (3) L'appelant envoie, dans le délai établi ou accordé par le paragraphe (1), par courrier recommandé, une copie de l'avis au propriétaire inscrit de toute marque de commerce que le registraire a mentionnée dans la décision sur laquelle porte la plainte et à toute autre personne qui avait droit à un avis de cette décision. (4) Le tribunal peut ordonner qu'un avis public de l'audition de l'appel et des matières en litige dans cet appel soit donné de la manière qu'il juge opportune. (5) Lors de l'appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi.
Loi sur les ingénieurs, L.R.O. 1990, ch. P. 28
Idem, services d'un ingénieur 40. (3) Est coupable d'une infraction et passible, sur déclaration de culpabilité, d'une amende d'au plus 10 000 $ pour la première infraction, et d'une amende d'au plus 25 000 $ pour chaque infraction subséquente quiconque n'agit pas en vertu d'un certificat d'autorisation et en conformité avec un certificat d'autorisation et : a) soit utilise un terme, un titre ou une description qui porte à croire qu'il est habilité à fournir au public des services relevant de l'exercice de la profession d'ingénieur; b) soit utilise un sceau qui porte à croire qu'il est habilité à fournir au public des services relevant de l'exercice de la profession d'ingénieur. L.R.O. 1990, chap. P. 28, par. 40 (3).
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FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-595-02
STYLE OF CAUSE: CANADIAN COUNCIL OF PROFESSIONAL ENGINEERS v. JOHN BROOKS COMPANY LIMITED
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: October 22, 2003
REASONS FOR JUDGMENT
AND JUDGMENT BY: The Honourable Mr. Justice O'Reilly
APPEARANCES:
Elizabeth G. Elliot FOR THE APPLICANT
Mark Robbins FOR THE RESPONDENT
SOLICITORS OF RECORD:
MACERA & JARZYNA, LLP FOR THE APPLICANT
Ottawa, Ontario
BERESKIN & PARR FOR THE RESPONDENT
Toronto, Ontario