Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2012 TMOB 181

Date of Decision: 2012-09-05

IN THE MATTER OF AN OPPOSITION by Canadian Institute of Bookkeeping Incorporated to application No. 1,347,718 for the trade-mark CPB – Certified Professional Bookkeeper in the name of Institute of Professional Bookkeepers of Canada

[1]               On May 16, 2007, the Institute of Professional Bookkeepers of Canada (the Applicant), filed an application for the trade-mark CPB – Certified Professional Bookkeeper (the Mark) based upon proposed use of the Mark in Canada.  The statement of wares and services currently reads as follows:

Wares: Printed publications, namely, books, booklets, brochures, pamphlets, newsletters and magazines all in the fields of bookkeeping. (2) Course and education materials namely computer software and CD ROMS used for educational purposes, data bases, data repositories, data management, communications management, website development, and electronic publishing all in the fields of bookkeeping, pre-recorded videotapes and audio tapes, instructors' manuals, student workbooks, books, text books, handbooks, course binders, study guides, teaching guides, lesson plans, lesson notes, reading assignments, exams, assignments, assignment solutions, model financial statements, case studies and solutions; and course presentation materials namely prepared slides, diagrams and charts all in the fields of bookkeeping. (3) Electronic publications namely books, booklets, brochures, pamphlets, newsletters and magazines all in the fields of bookkeeping. (4) Promotional clothing namely hats, caps, pants, jackets, sweat shirts, coats, vests, sweaters, fleece wear namely sweat shirts, sweat pants, jackets and vests; shirts, t-shirts, shorts, skirts, dresses, blouses, tank tops, leggings, socks, gloves, mittens, scarves, suspenders, belts, ties, head bands, kerchiefs; footwear namely shoes and boots. (5) Promotional merchandise namely jewellery, watches, clocks, barometers, thermometers, binoculars and telescopes, cosmetics namely lotions and fragrances; desk, office and stationery products namely pens, pencils, highlighters, markers, card holders, picture frames, paper holders, paper weights, pencil holders, pen holders, pen sets, pencil sets, calendars, mouse pads, photographs, prints, posters, book marks, plaques, book ends, globes, ashtrays, letter openers, business card holders, magnifying glasses, magnets, calculators, personal organizers, journals, year books, rulers, note pads, note cards, greeting cards, writing paper, notes with adhesive backing, flag dispensers, note dispensers, pad holders and desk accessories namely desk sets, desk organizers, desk mats, paper clips, memo boards, packing boxes, gift boxes, gift bags, gift wrap and photo albums; luggage, travel bags, duffel bags, tote bags, knapsacks, back packs, fanny packs, cooler bags, lunch bags, garment bags, shoe bags, toiletry bags, bottle bags, attaché cases, brief cases, computer cases, portfolios, folios, eyeglass cases and luggage tags; wallets, money clips, billfolds, purses, key chains, key fobs, key tags, key rings, badges holders, badges, buttons and sunglasses; blank compact disks and compact disk holders; outdoor and recreational accessories namely sports towels, thermal insulated containers for food or beverages, umbrellas, sports drinking bottles sold empty, pocket knives, flash lights, beach chairs, and hockey pucks; communications equipment and accessories namely cellular phones, cellular phone carrying cases, cellular phone adapters and head phones; housewares and accessories namely, blankets, flasks sold empty, bottle openers, can openers, bar accessories namely corkscrews, swizzle sticks, martini shakers; canisters, cookie jars, jars, mugs, thermal mugs, cups, crystal and glassware namely, wine glasses, alcohol decanters, drinking glasses, vases, plates, serving platters, serving trays, serving dishes, bowls, salad bowls, drink pitchers; plastic food containers, coasters, ashtrays, lighters, towels, face cloths, table linens, candles, candle holders and Christmas stockings; flatware namely forks, spoons, knives; figurines, sculptures and ornaments made of one or more of glass, marble, porcelain, wood, plastic, plaster, china, crystal and terra cotta; furniture namely chairs and lamps; trophies and awards; first aid and travel safety kits for domestic or other non-professional use; food products namely candy, chocolate, dried fruit and nuts; food baskets containing one or more of candy, chocolate, dried fruit and nuts.

Services: Promotion of the interchange of knowledge through website creation, development and hosting all in the fields of bookkeeping.

[2]               The application was advertised for opposition purposes in the Trade-marks Journal of October 8, 2008.

[3]               On December 2, 2008, the Canadian Institute of Bookkeeping Incorporated (the Opponent) filed a statement of opposition against the application. The grounds of opposition may be summarized as follows: the Applicant’s application does not conform to the requirements of 30(i) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act), the Mark is clearly descriptive 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 condition of or the persons employed in their production or of their place of origin pursuant to section 12(1)(b), the Applicant is not the person entitled to registration of the Mark pursuant to section 16(3)(a) based on confusion with the Opponent’s use and registration of its trade-mark CERTIFIED BOOKKEEPER and Design (Application no. 1,324, 775) for bookkeeping services, and the Mark is not distinctive. 

[4]               The Applicant filed and served a counter statement, in which it denied the Opponent’s allegations.

[5]               The Opponent’s evidence consists of the affidavits of Walter Krystia, Program Director of the Opponent, Linda Victoria Thibeault, trade-mark searcher with Trade Mark Reflections Ltd., and Kathryn L. Beck, summer student at the Opponent’s agent’s firm.  The Applicant filed the affidavit of Mr. Gordon Skillen, Executive Director of the Applicant.  Only Mr. Skillen was cross-examined on his affidavit and his cross-examination transcript and exhibits form part of the record.

[6]               Both the Applicant and the Opponent filed a written argument.  An oral hearing was conducted at which both parties were represented.

Onus and Material Dates

[7]               The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is however an initial burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298; Dion Neckwear Ltd v Christian Dior, S.A. et al. (2002), 20 CPR (4th) 155 (FCA)].

[8]               The material dates that apply to the grounds of opposition are as follows:

•         section 30 - the filing date of the application [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475];

 

•         section 16(3) - the filing date of the application [see section 16(3)];

•         non-distinctiveness - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc. (2004), 34 CPR (4th) 317 (FC)].

Section 16(3)(a) Ground of Opposition

[9]               The Opponent’s s. 16(3)(a) ground, as pleaded, alleges that the Mark is confusing with the Opponent’s mark CERTIFIED BOOKKEEPER and Design, application No. 1,324,775, shown below.

I note that this application is based upon use in Canada by the Opponent in association with bookkeeping services since at least as early as July 1, 1996. 

[10]           With respect to this ground of opposition, there is an initial burden on the Opponent to evidence use of its trade-mark prior to the Applicant's filing date (i.e. May 16, 2007).  In addition, sections 16(5) and 17(1) of the Trade-marks Act place a burden on the Opponent to establish non-abandonment of its marks as of the date of advertisement of the Applicant's application.

[11]           From the evidence furnished, I am not satisfied that the Opponent has met its burden under this ground.  Reproduced below is an excerpt from Exhibit I to the affidavit of Mr. Krystia which is a sample of an advertisement from a publication called “Training Places” dated Fall 2006 which Mr. Krystia states shows the CERTIFIED BOOKKEEPER mark.

 

 

[12]           I agree with the Applicant that the use shown by the example above is not use of the Opponent’s trade-mark CERTIFIED BOOKKEEPER and Design.  In considering this issue, I had regard to the following comments of Senior Hearing Officer D. Savard in 88766 Canada Inc. v. Coca-Cola Ltd. (2006), 52 (4th) 50 at 53:

In the opposition decision Nightingale Interloc v. Prodesign, supra, the then Hearing Officer enunciated the following principle concerning trademarks used with additional matter:

PRINCIPLE 1

Use of a mark in combination with additional material constitutes use of the mark per se as a trade mark if the public, as a matter of first impression, would perceive the mark per se as being used as a trade mark. This is a question of fact dependent upon such factors as whether the mark stands out from the additional material, for example, by the use of different lettering or sizing ... or whether the additional material would be perceived as purely descriptive matter or as a separate mark or trade name ...

In the case RTM v. CII Honeywell Bull, supra, the Federal Court of Appeal addressed the issue of whether the composite mark "CD HONEYWELL BULL" constituted use of the registered trade-mark BULL. At page 525, the Court stated:

"That question must be answered in the negative unless the mark was used in such a way that the mark did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used."

The Court concluded that the use of CII HONEYWELL BULL was not use of "BULL".

In the case Standard Coil v. Standard Radio Products , supra , the Court addressed the issue of whether the word STANDARD " per se " was the trade-mark being used. The trade-mark STANDARD was being used with additional matter, however, the Court found that the word STANDARD was the dominant feature of the trade-mark used and that it overwhelmed all else and, consequently, it concluded that the trade-mark STANDARD had been used.

In the case at hand, I am of the view that as a matter of first impression the public would probably not perceive the word CLASSIC as forming a distinct trade-mark. I arrive at this conclusion even considering the difference in size and font of the words "COCA-COLA" and "CLASSIC". In my view, the word CLASSIC does not really stand out and therefore I cannot conclude that it would create a separate impression in the minds of the public. Rather, I consider that the public would view the word CLASSIC as being tied to the words COCA-COLA. Consequently, I am of the view that the public would probably perceive the trade-marks "COCA-COLA" and "COCA-COLA CLASSIC" as being used but not CLASSIC per se .

[13]           In the present case, I consider the design element of the Opponent’s mark to be a dominant part of the Opponent’s mark.  I note that although the design appears in close proximity to the Opponent’s name, i.e. Canadian Institute of Bookkeeping, it does not appear alongside the words CERTIFIED BOOKKEEPER.  As the words CERTIFIED BOOKKEEPER are far removed from the design, I am of the view that as a matter of first impression the public would not perceive the mark CERTIFIED BOOKKEEPER and Design as a distinct trade-mark.  As I am not satisfied that any of the Opponent’s evidence shows use of its CERTIFIED BOOKKEEPER and Design mark prior to the Applicant’s filing date, the Opponent has not met its burden under this ground and this ground is therefore unsuccessful.

Section 12(1)(b) Ground of Opposition

[14]           The Opponent pleads that the mark is not registrable because, contrary to section 12(1)(b), it is clearly descriptive or deceptively misdescriptive of the character or quality of the services in association with which it is used or of the persons employed in their production.    The issue is to be determined from the point of view of an everyday user of the wares or services.  Further, the trade-mark in question must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression [see Wool Bureau of  Canada Ltd v Registrar of Trade-marks (1978), 40 CPR (2d) 25 (FCTD) at 27-28, and Atlantic Promotions Inc. v Registrar of Trade-marks (1984), 2 CPR (3d) 183 (FCTD)]. 

[15]           Although there is a legal burden upon the Applicant to show that its mark is registrable, the Opponent must first adduce sufficient evidence to support its claim that the Mark is clearly descriptive [see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298; Dion Neckwear Ltd v Christian Dior, S.A. (2002), 20 CPR (4th) 155 (FCA)].

[16]           Ms. Beck provides the following dictionary definitions from the Random House Unabridged Dictionary for the words “certified” and “professional”:

Certified – having or proved by a certificate

Professional – following an occupation as a means of livelihood or for gain

[17]           On cross-examination, Mr. Skillen admitted that the Beck affidavit clearly shows that both the words “certified” and “professional” are words of ordinary, dictionary definition [Skillen cross-ex., p. 16, lines 15-35].  He also admits in his affidavit that the word “bookkeeper” is a dictionary word whose general meaning would likely be known by the majority of the population [Skillen affidavit, paragraphs 3 and 4].  I note that the definition for the term “bookkeeper” as found in the Canadian Oxford Dictionary is as follows: “a person who keeps accounts for a trader, a public office, etc.” 

[18]           There is also evidence that suggests that the Mark as a whole describes a professional designation.  In this regard, Mr. Skillen states the following in his affidavit at paragraph 13:

The words “bookkeeper” and “accountant” are dictionary words, whose general meaning I believe would likely be known to the majority of the population.  However, unlike “accountants”, certifying “bookkeepers” as a professional designation is a fairly new concept.  Because of the unregulated nature of the field of bookkeeping, a bookkeeper can call himself/herself a bookkeeper merely by providing simply data entry services.  The bookkeeper is not necessarily skilled in handling accounting records and appropriate entries.  The Institute was and is fulfilling the need to provide standards of training, and to create and distinguish professionals through its training recommendations and practical examination; thus the unique trade-mark and designation CPB – CERTIFIED PROFESSIONAL BOOKKEEPER was born.

[19]           Attached as Exhibit B to Mr. Skillen’s affidavit is a sample certificate which is provided to members of the Institute of Professional Bookkeepers of Canada upon certification.  The certificate states the following: “This is to certify that the member has achieved the certification of CPB Certified Professional Bookkeeper”.  Mr. Skillen explains that certification requires a standard of knowledge as a bookkeeper, provided that the members meet the requirements of a professional level of practice, a code of ethics, terms and conditions and that certification renewal is maintained.  Once the certificate is obtained, the member’s use of the Mark allows for the use of it in association with “bookkeeping services”.

[20]           The Opponent’s evidence also shows that certain bookkeepers in Canada have sought educational training to become certified in the field of bookkeeping prior to the material date.  Marked as Exhibit G to the affidavit of Mr. Krystia are sample copies of Continuing Education Calendars provided to prospective students and web pages from community colleges across Canada from 2005 – 2009, advertising the Certified Bookkeeper designation of the Opponent. 

[21]           With respect to the acronym CPB, Mr. Skillen admits that “the CPB designation” is gaining meaning and recognition independent of the words CERTIFIED PROFESSIONAL BOOKKEEPER.  In this regard, he states the following at paragraph 44 of his affidavit:

Like the acronymic designations – CGA, CMA, CA, I believe the CPB designation is gaining meaning and recognition independent of the words CERTIFIED PROFESSIONAL BOOKKEEPER as a whole.  This is a marketing effort which is managed by the Institute.  The association of the marks with respect to “bookkeeping services” is used by its members through certification and authorized use.

[22]           The Opponent notes that the October 26, 2010, Trade-mark Practice Notice entitled Professional Designations and their Initials states that “the mere addition of an abbreviation, acronym, or initials of a professional designation” contained in a trade-mark will not render a trade-mark registrable if it is descriptive of the applied for wares and services [see Life Underwriters Assn of Canada v Provincial Assn of Quebec Life Underwriters (1988), 22 CPR (3d) 1 and College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v Council of Natural Medicine College of Canada (2009), 80 CPR (4^th) 265].  The Opponent therefore submits that merely adding CPB does not change the fact that the phrase CERTIFIED PROFESSIONAL BOOKKEEPER, and the meaning of its component elements as a whole, are clearly descriptive of wares and services that have a direct relation “in the fields of bookkeeping”.

[23]           In the present case, the Applicant has applied for a variety of wares and services related to bookkeeping but not bookkeeping services, per se.  The issue, therefore, is whether the average consumer of the Applicant’s wares and services, upon seeing the mark CPB – CERTIFIED PROFESSIONAL BOOKKEEPER, would conclude that these wares or services are produced by a professional from that designation (i.e. a certified professional bookkeeper). 

[24]           In considering this issue, I had regard to the following comments of Justice Muldoon in Canadian Council of Lubrication Engineers v Lubrication Engineers (1984), 1 CPR (3d) 309 (FCTD) at 317:

Now, recalling the respondent’s disclaimer of the word “lubrication” in its desired registered trade-mark, which word although a noun is therein employed in adjectival sense, the assertion of the excellence or the enhancement of a quality of the product which is conveyed by the proposed trade-mark is very clear.  The word “engineers” clearly conveys a connotation of the specialized knowledge and expertise of a trade or profession; and in the plural form it further connotes the special or extraordinary excellence associated with second, subsequent or multiple professional opinions and their collective fund of expertise.  

[25]           In the present case, the evidence suggests that “Certified Professional Bookkeeper” (and its acronym “CPB”) is a professional designation for bookkeepers.  Even if it were not, when the words “certified” and “professional” appear before the word “bookkeeper”, the impression created is that a member from that profession has achieved a standard of training that distinguishes him/her from other bookkeepers.  I therefore find that when the Mark as a whole is applied to the wares listed as (1) through (3) which include printed publications, course and education materials, and electronic publications all in the fields of bookkeeping, and to the applied for services which include the promotion of interchange of knowledge through website creation, development and hosting all in the fields of bookkeeping, the Mark would describe to the average purchaser of these wares or services that a bookkeeper of a certain certification and standard had been involved in the production of these wares and services.  I therefore find that the Mark is clearly descriptive or deceptively misdescriptive of the persons involved in the production of the above noted wares and services and this ground is successful insofar as those wares and services are concerned.

[26]           With respect to the remaining applied for wares, I note that Mr. Skillen states the following at paragraph 4 of his affidavit:

The application was filed on the basis of proposed use with the intention of securing the trade-mark CPB-CERTIFIED PROFESSIONAL BOOKKEEPER firstly for use by the Institute with respect to a wide variety of wares and (sic) services, as mentioned above, and subsequently to provide accreditation through a certification mark to the members of the Institute in association with “bookkeeping services.

The Opponent submits that the evidence does not show the Mark in association with the applied for wares and services but rather only in association with accreditation services.  It appears that what the Opponent is arguing is that the Applicant never had the intention to use the Mark with the applied for wares and services. 

[27]           As noted by the Applicant’s agent, there is no requirement on the Applicant to show use of its Mark in association with the proposed wares and services until it has been approved [see Molson Canada v Anheuser Busch (2003), 29 CPR (4th) 315 (FCTD)].  Further, an argument that the Applicant, at the filing date of the application, lacked an intention to use the trade-mark in Canada in association with the applied for wares and services could have more properly have been the basis for a ground of opposition under section 30(e) of the Act which has not been pleaded in this case.  The section 12(1)(b) ground is therefore not successful with respect to the wares listed under numbers (4) and (5).

Section 38(2)(d) Ground of Opposition

[28]           The Opponent has also pleaded that the Mark is not distinctive and is not capable of distinguishing the Applicant’s wares and services from the services of others, including the Opponent. 

[29]           While there is a legal onus on the Applicant to show that the Mark is adapted to distinguish or actually distinguishes its wares and services from those of others throughout Canada [see Muffin Houses Incorporated v The Muffin House Bakery Ltd. (1985), 4 CPR (3d) 272 (TMOB)], there is an initial evidential burden on the Opponent to establish the facts relied upon in support of the ground of non-distinctiveness. Pursuant to its evidential burden, the Opponent is under an obligation to show that, as of December 2, 2008, the Opponent’s CERTIFIED BOOKKEEPER mark had become known sufficiently to negate the distinctiveness of the Mark [see Bojangles' International, LLC v Bojangles Café Ltd. (2004), 40 CPR (4th) 553, affirmed (2006) 48 CPR (4th) 427 (FCTD)].

[30]           The Opponent offers professional development courses to provide its members with skills in bookkeeping practices at local community colleges across Canada.  The Opponent submits that its evidence shows that it has used the term CERTIFIED BOOKKEEPER since July 1996, and has built its reputation as a leading professional association in the field of bookkeeping [Krystia Affidavit, para. 16].  The Opponent further submits that it has become known through the advertising and offering of its bookkeeping courses in calendars distributed by 78 community colleges across Canada, and bearing its CERTIFIED BOOKKEEPER mark, which is also featured prominently on the web pages of the colleges and the Opponent’s website for prospective students to see.  The Opponent has advertised its bookkeeping courses and certification program in association with the term CERTIFIED BOOKKEEPER to the public, bookkeeping and accounting professionals, which have appeared in the following local and national publications since 1999: Bottom Line”, “CMA Magazine”, “CGA Magazine”, “B.C. Counsellor”, “Canadian Study”, “Metro”, “OSCA Today”, “Lexis Nexis”, “CGA Ontario Annual Roster & Directory of Services”, “Employment News”, “Toronto Star”, “Accounting World Newspaper”, “Career Choices”, “HR World Newspaper”, and “OSCA Membership Directory”.  From 2005-2008, the Opponent spent over $45,000 on advertising expenditures and a copy of invoices showing advertising expenses is attached to Mr. Krystia’s affidavit as Exhibit H.

[31]           The Applicant, on the other hand, argues that the Opponent’s evidence does not show use, making known or reputation of the term CERTIFIED BOOKKEEPER. In this regard, the Applicant’s objections to Mr. Krystia’s evidence may be summarized as follows:

•         there is no evidence of any license agreement between the Opponent and the community colleges which offer its bookkeeping courses;

•         certificates do not prove use in relation to providing bookkeeping services for others or by others;

•         the services identified in the brochure attached as Exhibit F to Mr. Krystia’s affidavit are courses or educational services and not bookkeeping services;

•         the samples of advertisements attached as Exhibits G, H and I to Mr. Krystia’s affidavit should be accorded no weight because no distribution areas or circulations figures were provided;

•         the list of visitors to the Opponent’s website does not show use of the Opponent’s mark.

[32]           I will address each of these arguments sequentially.

[33]           With respect to the Applicant’s argument that the Opponent has not provided a license agreement between it and the 72 colleges which advertise its CERTIFIED BOOKKEEPER course, I note that the section 38(2)(d) ground as pleaded refers to “others, including the opponent”.  In the context of distinctiveness, it is immaterial whether the Opponent or other colleges in Canada used the term CERTIFIED BOOKKEEPING as a trade-mark or otherwise.  As the Opponent is therefore only under an obligation to show that either it or another third party has used the term CERTIFIED BOOKKEEPER sufficiently to negate the distinctiveness of the Mark, it is not relevant to the issue of distinctiveness whether or not the colleges who advertise and offer the Opponent’s course are licensed to do so.

[34]           With respect to the services the Opponent has used the term CERTIFIED BOOKKEEPER in association with, I agree with the Applicant that much of the evidence shows the term CERTIFIED BOOKKEEPER in association with accreditation and certification services in the field of bookkeeping, as opposed to only in association with “bookkeeping services”.  I do not consider this to be an issue, however, as both of the Opponent’s services overlap with the wares and services of the Applicant.

[35]           With respect to the fact that the Opponent does not provide distribution areas or circulation figures for its advertising, the copies of invoices attached to Mr. Krystia’s affidavit as Exhibit H do show that all of the Opponent’s ads displaying the term CERTIFIED BOOKKEEPER have been placed in Canadian publications, and at least some of which prior to the material date. Further, I am permitted to take judicial notice of the circulation of national newspapers such as the Toronto Star [see Northern Telecom Ltd v Nortel Communications Inc. (1987), 15 CPR (3d) 540 at 543 (TMOB) and Milliken & Co v Keystone Industries (1970) Ltd (1986), 12 CPR (3d) 166 (TMOB)], and the evidence shows that at least two of the Opponent’s ads appeared in this publication prior to the material date. Thus, I am able to conclude that there has been some limited circulation in Canada of advertisements featuring CERTIFIED BOOKKEEPER prior to the material time.

[36]           Regarding the pages from the Opponent’s website showing the Opponent’s use of CERTIFIED BOOKKEEPER on its Canadian website, I am of the view that official websites developed and maintained by the organization itself provide more reliable information than unofficial web sites.  The Opponent has also provided evidence showing the number of people who had visited its website between 2006 and 2009.  In 2006, for example, there were over 8,000 visits to the Opponent’s website, 6,600 of which were from first time visitors.  I think it is therefore reasonable to conclude that some Canadians had viewed the Opponent’s website and its use of the term CERTIFIED BOOKKEEPER prior to the material date.

[37]           The pertinent question in this case is whether the use of CERTIFIED BOOKKEEPER by the Opponent or others is sufficient to negate the distinctiveness of the applied for Mark [see Motel 6, Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 at 58 (FCTD)].  In view of the Opponent’s uncontested and uncontradicted evidence, I am prepared to infer that the general public, or at least those members in the bookkeeping community, have been exposed to various publications in which the Opponent’s CERTIFIED BOOKKEEPER advertisements have appeared.  While the Opponent’s evidence may only show a limited reputation of the term CERTIFIED BOOKKEEPER, I think it is important to note that both the Applicant and the Opponent operate in the field of bookkeeping [see Canadian Dental Assn v Ontario Dental Assistants Assn (2011), 94 CPR (4th) 357 (TMOB)].  Therefore, I find that the reputation shown of the term CERTIFIED BOOKKEEPER is sufficient to negate the distinctiveness of the applied for Mark.  As there is no evidence that the Applicant’s Mark has been used or made known in association with the applied for wares and services, the Applicant has failed to meet its legal onus.  The distinctiveness ground of opposition therefore succeeds. 

Section 30(i) Ground of Opposition

[38]           As its section 30(i) ground, the Opponent has pleaded that the application does not conform to the requirements of section 30(i) as the applicant knew or ought to have known that due to the Opponent’s extensive reputation and goodwill in its trade-mark CERTIFIED BOOKKEEPER and Design, and its uses of the tern CERTIFIED BOOKKEEPER since July 1996, the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in association with the services described in the application.

[39]           Where an applicant has provided the statement required by section 30(i), a section 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant. [Sapodilla Co. Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]  As this is not such a case, I am dismissing this ground of opposition.

Disposition

[40]           Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.

______________________________

Cindy R. Folz

Member,

Trade-marks Opposition Board

Canadian Intellectual Property Office