Citation: 2019 TMOB 107

Date of Decision: 2019-10-02

IN THE MATTER OF AN OPPOSITION

	Certified Management Accountants of Ontario	Opponent
and
	The Chartered Institute of Management Accountants	Applicant
	1,533,727 for THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS	Application

 

I The Record  4

II Preliminary Remarks  5

III History of the Accounting Profession in Canada and in Great Britain  7

III.1 CMA Canada  8

III.2 CMAO  8

III.3 CERTIFIED MANAGEMENT ACCOUNTANT Designation  10

III.3.i Practice Standards for CERTIFIED MANAGEMENT ACCOUNTANT Designation  11

III.3.ii Promotion of CERTIFIED MANAGEMENT ACCOUNTANT Mark  11

III.4 ICAO  12

III.4.i CHARTERED ACCOUNTANT Designation in Ontario  12

III.4.ii CHARTERED PROFESSIONAL ACCOUNTANT Designation in Ontario  13

III.5 Summary of Some of the Designations in Force in Ontario by 2012  14

III.6 The Chartered Institute of Management Accountants and the present application  14

III.6.i Ms. Treasure’s perspective  14

III.6.ii Mr. Harding’s perspective  16

III.6.iii Mr. Ratnayake’s perspective  20

IV Similarities in the Parties’ activities and trademarks  25

V Final observations  26

VI Legal Onus and Burden of Proof  28

VII The Material Dates  28

VIII Ground of Opposition Based on Section 30(f) of the Act  30

IX Ground of opposition based on Section 30(i) of the Act  31

X Ground of Opposition Based on Section 30(a) of the Act  37

XI Ground of Opposition based on Section 12(1)(e)  39

XII Ground of Opposition based on Section 30(b) of the Act  42

XIII Ground of opposition based on section 12(1)(b) of the Act  44

XIV Ground of Opposition Based on Section 2 (distinctiveness)  49

XV Grounds of Opposition based on Sections 16(1)(a) and 12(1)(d) of the Act  49

XVI Disposition  50

Annex A  51

Annex B  53

Annex C  61

Annex D  62

 

 

I The Record

[1]  On June 29, 2011 The Chartered Institute of Management Accountants (hereinafter referred to as the Applicant or the CIMA) filed the application bearing serial No. 1,533,727 to register the trademark THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS (the Mark).

[2]  The application is based on use in CANADA since at least as early as November 1986 and has a priority filing date of April 18, 2011, based on an application filed in the United Kingdom, application No. 2578969 in association with the same kind of goods and in association with the same kind of services. Also, the Registrar recognized the registrability of the Mark for the Services based on evidence filed under Section 12(2) of the Trademarks Act RSC 1985, c T-13 (the Act). All references are to the Act as amended June 17, 2019, unless otherwise noted. As this application was advertised prior to June 17, 2019, the grounds of opposition set out under section 38(2) of the Act as it read before this day apply. The application covers a long list of goods and services listed in Annex A.

[3]  The application was advertised on December 11, 2013 in the Trademarks Journal for the purposes of opposition.

[4]  On May 9, 2014 both the Institute of Chartered Accountants of Ontario (ICAO) and Certified Management Accountants of Ontario (CMAO) filed separate statements of opposition. They were forwarded to the Applicant by the Registrar on May 27, 2014. The grounds of opposition raised by both opponents are identical namely, sections 2 (distinctiveness), 12(1)(b), (d) and (e) (registrability); 16(1) (a) (entitlement); 30(a), (b), (f) and (i) (compliance) of the Act. Given that the grounds of opposition pleaded raised uncommon issues, they are reproduced at Annex B to this decision.

[5]  ICAO and CMAO stated, in a letter dated June 26, 2017, that as a result of the Chartered Professional Accountants of Ontario Act, 2017, S.O. 2017, c. 8, Sch. 3, enacted May 17, 2017, “Certified Management Accountants of Ontario” amalgamated with “The Institute of Chartered Accountants of Ontario” and “The Certified General Accountants Association of Ontario”, and continued under the name “Chartered Professional Accountants of Ontario” (CPAO).

[6]  Given that the evidence filed by ICAO and CMAO differs from one opposition to another and given that the opponent was different at the outset of these oppositions, I am rendering two separate decisions. This one will deal with the opposition filed originally by CMAO. I shall use the terms CMAO, ICAO and/or the Opponent indistinctively to refer to the opponent in this decision, except where stipulated otherwise.

[7]  The Applicant filed a counter statement on July 10, 2014 denying each ground of opposition pleaded.

[8]  The Opponent filed, as its evidence, the affidavit of Janet Treasure, sworn on November 10, 2014 (the Treasure Affidavit). The Applicant filed the affidavits of Jocelyn Yurick sworn on August 25, 2015, Edward Beach sworn on September 1, 2015, Andrew Harding sworn on September 2, 2015 and Amal Ratnayake sworn on September 3, 2015.

[9]  The affidavit of Mr. Beach is no longer part of the record as he failed to attend his cross-examination. I made a preliminary ruling to that effect prior to the hearing in accordance with the provisions of section 44(5) of the Trademarks Regulations as they read prior to June 17, 2019. All the other deponents identified in the previous paragraph have been cross-examined and the transcripts and the answers to undertakings are part of the record

[10]  Both parties filed written arguments and attended a hearing.

[11]  For the reasons that follow, I refuse the application.

II Preliminary Remarks

[12]  This is one application of a group of 4 applications against which a total of 5 oppositions were filed. For the majority of these oppositions, CPAO and the CIMA are respectively the opponent and the applicant. The hearing of all these oppositions was held over a period of two days. Annex C is a chart providing the following information: the application number, the trademark opposed, the name of the parties and the grounds of opposition pleaded in each of these oppositions.

[13]  Given that the grounds of opposition, the material dates, the evidence and the written arguments vary from one file to another, I decided to render separate decisions for each of these oppositions despite similarities in some files.

[14]  In all, these opposition files raise one or more of the following issues:

• Trademark vs. tradename use;

• Confusion of the applied-for mark with an official mark, a certification mark and/or a regular mark;

• Regular mark vs. certification mark;

• The effect of provincial legislation on the registration of a professional designation as a trademark; and

• Whether the Opponent’s initial burden has been met and especially in the context of the grounds of opposition based on section 30(b) of the Act.

[15]  In some files there might be other issues. However, I will address only those issues that I consider relevant or may have some merit. That is why I will only refer to portions of the evidence filed by the parties that have some relevancy to the grounds of opposition that I have to assess.

[16]  I refer to sections 2, 9 and 23 of the Act for the definitions of the terms “trademark”, “tradename”, “official mark” and “certification mark”. They are governed by specific provisions in the Act and it will be important throughout this decision to bear in mind the distinctions between these terms. Their definitions can be found in Annex D.

[17]  The parties are accountants’ associations. The Opponent is located in Canada and the Applicant is located in the United Kingdom (UK). In some instances, some of the Canadian associations’ acronyms are also used as a designation (for example: CPA). Some designations, or parts thereof, are registered as a “regular mark” (for example: CERTIFIED MANAGEMENT ACCOUNTANT) and/or as an “official mark” (for example: CPA). According to the Opponent, the description of some of the services found in some of the applications under opposition implies that some trademarks applied for are used or to be used as a “certification mark”.

[18]  The field of accountancy designations has been characterized, and rightly so, as an “alphabet soup”. Just for the purpose of illustration, over the years the following designations could have been used in Canada: “CA”, “CMA”, “CGA” and “CPA”, to name a few.

[19]  There was an issue about the legal name of the Applicant which, according to the Opponent differs from the one identified in the corresponding UK registration. The Opponent is no longer pursuing this issue.

[20]  I shall ignore any opinion on legal issues contained in the affidavits of the parties’ representatives. As an example at this stage, I simply refer to the content of paragraph 104 of Ms. Treasure’s affidavit.

[21]  To better understand the questions raised in most of these opposition files, some background information on the parties is necessary, including a history of the provincial legislations that govern the use of acronyms and designations associated with the practice of accountancy, as well as some general information on the Opponent’s predecessors in title and its successors.

III History of the Accounting Profession in Canada and in Great Britain

[22]  Ms. Treasure has been since 2010 the Vice-President, Professional Development at CMAO. She explains that in Ontario, at the time of execution of her affidavit, there were three accounting bodies which were authorized by provincial statutes to permit their members to provide specific accounting services, namely:

• ICAO;

• Certified General Accountants Association of Ontario (CGAO); and

• CMAO.

 

[23]  Ms. Treasure states that CMAO is in the process of unifying its operation with those of ICAO and CGA Ontario to operate as the Chartered Professional Accountants of Ontario (CPAO). Since the execution of her affidavit, this unification has occurred as detailed previously.

[24]  Ms. Treasure states that ICAO, CGAO and CMAO have corresponding national bodies, namely the Canadian Institute of Chartered Accountants (CICA), the Certified General Accountants Association of Canada (CGA Canada) and the Society of Management Accountants of Canada (CMA Canada). She states that CMAO was, at the time of execution of her affidavit, in the process of unifying its operation with those of ICAO and CGA Ontario to operate as the Chartered Professional Accountants of Ontario (CPAO).

III.1 CMA Canada

[25]  Ms. Treasures states that CMA Canada is a federal non-profit corporation incorporated in 1920. Since 1977, CMA Canada has been called The Society of Management Accountants of Canada. It represents the interests of management accountants in Canada.

[26]  Ms. Treasure affirms that up until 2013, CMA Canada was the owner of the certification mark CERTIFIED MANAGEMENT ACCOUNTANT in Canada, registered for use in association with identifying, measuring, accumulating, analyzing, preparing, interpreting and communicating information used by business to plan, evaluate and control appropriate use of resources; and preparing financial reports for shareholders, creditors, regulatory agencies and tax authorities.

[27]  Ms. Treasure states that in January 2013, CICA and CMA Canada unified and created a new national accounting organization called Chartered Professional Accountants of Canada (CPA Canada). On July 2, 2013, CMA Canada transferred its CERTTIFIED MANAGEMENT ACCOUNTANT certification mark to CPA Canada [see Exhibit 1 to her affidavit for a copy of that registered mark]. “CMA Canada” shall refer hereinafter to CMA Canada and its successor in title CPA Canada.

[28]  CMA Canada licenses its CERTIFIED MANAGEMENT ACCOUNTANT certification mark to its provincial affiliates, including CMAO, (hereinafter Provincial CMA Bodies) to be used in their respective provinces.

[29]  Ms. Treasure explains that Provincial CMA Bodies work with CMA Canada to oversee, regulate and provide guidance to the management accountant profession across Canada. This ensures that there are common standards across Canada for individuals who hold the CERTIFIED MANAGEMENT ACCOUNTANT designation.

III.2 CMAO

[30]  Ms. Treasure explains that CMAO is an accounting body in the province of Ontario. It regulates the use of the CERTIFIED MANAGEMENT ACCOUNTANT designation in Ontario.

[31]  Ms. Treasure affirms that CMAO was incorporated in 1941 under the name Institute of Society of Industrial and Costs Accountants of Ontario by An Act to incorporate the Society of Industrial and Cost Accountants of Ontario. [See Exhibit 2 to her affidavit for the CICAO Act, 1941]. In 1981, CMAO’s name was changed to The Society of Management Accountants of Ontario [see Exhibit 3 to her affidavit for a copy of the SMAO Act, 1981].

[32]  Ms. Treasure states that one of the amendments made in the SMAO Act, 1981 was the enactment of a new provision which gave CMAO the exclusive right to use the CERTIFIED MANAGEMENT ACCOUNTANT designation in Ontario. Such exclusive right continues today pursuant to the Certified Management Accountants Act, 2010. It also changed CMAO’s name to Certified Management Accountants of Ontario [see Exhibit 4 for a copy of the CMA Act, 2010 and in particular section 26]. Since 1981, CMAO has had the exclusive statutory right to grant its members the CERTIFIED MANAGEMENT ACCOUNTANT designation in Ontario.

[33]  Section 4  of the CMA Act, 2010 defines CMA Ontario’s objects which are:

• a) Promote and protect the public interest by governing and regulating the practice of its members;

• b) To promote and protect the interest of the accounting profession; and

• c) To promote and increase the knowledge, skill and proficiency of its members.

[34]  Object (a) is carried on by regulating the use of CERTIFIED MANAGEMENT ACCOUNTANT designation in Ontario. CMAO’s members work in four areas: public practice, academia, government and business, including not-for-profit sector.

[35]  Object (b) is carried out by advocating on behalf of its members and by promoting public awareness of its members. Exhibit 5 to Ms. Treasure’s affidavit are printouts from CMAO’s website that show various ways in which CMAO promotes public awareness of its members and protects the interests of the accounting profession.

[36]  Object (c) is carried out by publishing and distributing to its members various educational and information resources such as a weekly and a quarterly magazine, press releases, by conducting presentations, seminars, webinars, ethics counselling, well-being assistance and networking events. Exhibit 6 to Ms. Treasure’s affidavit are printouts from CMAO’s website that show various ways in which CMAO promotes and increases knowledge, skill and proficiency of its members.

III.3 CERTIFIED MANAGEMENT ACCOUNTANT Designation

[37]  Ms. Treasure affirms that the CERTIFIED MANAGEMENT ACCOUNTANT designation is granted by Provincial CMA bodies to individuals in their respective province or territory who meet certain qualification requirements established by CMA Canada, together with the Provincial CMA Bodies.

[38]  Ms. Treasure explains that the accreditation programs to students have educational, examination and experience requirements. Such material displays the CERTIFIED MANAGEMENT ACCOUNTANT mark. She adds that the educational component of each accreditation program includes courses that students are required to complete. While attending these courses, students are provided educational materials that display the name Institute of Chartered Accountants of Ontario [see Exhibit 7 to her affidavit]. The examinations have also the CERTIFIED MANAGEMENT ACCOUNTANT mark on them [see Exhibit 8 to her affidavit].

[39]  Ms. Treasure states that students in Ontario pay tuition to CMA Canada and CMAO to participate in the CERTIFIED MANAGEMENT ACCOUNTANT accreditation programs. At paragraph 34 of her affidavit, she sets out the annual amount of tuition paid to CMA Canada and CMAO since 1985 which total more than 175 million dollars.

[40]  Ms. Treasure explains that in Ontario, if students complete the CERTIFIED MANAGEMENT ACCOUNTANT accreditation program they will become members of both CMA Canada and CMAO. In paragraph 35 of her affidavit, she provides the annual number of members since 1985, which has been more than 10,000 members since 1991.

[41]  Ms. Treasure explains that in Ontario, members pay an annual membership fee to CMA Canada and to CMAO. In paragraph 36 of her affidavit, she sets out the annual amount received by CMA Canada and CMAO since 1985, which total more than 202 million dollars.

III.3.i Practice Standards for CERTIFIED MANAGEMENT ACCOUNTANT Designation

[42]  Ms. Treasure states that members who are granted the right to use the CERTIFIED MANAGEMENT ACCOUNTANT designation must comply with practice standards related to professional conduct, continuing development, practice structure, membership renewal and the use of the designations. They are set by CMA Canada and the Provincial CMA bodies. Exhibit 9 to her affidavit is sample pages of representative practice guidelines that display the CERTIFIED MANAGEMENT ACCOUNTANT mark from 1984 to 2006. Exhibit 10 to her affidavit is a printout from the Opponent’s website which lists CMAO’s current and archive Bylaws, Regulations and Professional Conduct Rules while Exhibit 11 is representative samples of Bylaws, Regulations and Professional Conduct Rules from 1992 to 2014.

III.3.ii Promotion of CERTIFIED MANAGEMENT ACCOUNTANT Mark

[43]  Ms.  Treasure lists in paragraph 40 of her affidavit the means used by CMA Canada and CMAO to promote the CERTIFIED MANAGEMENT ACCOUNTANT brand and the skills of its members. In fact, CMAO is licensed by CMA Canada to promote the CERTIFIED MANAGEMENT ACCOUNTANT brand and its members in Ontario.

[44]  Ms. Treasure provides details of numerous advertising and promotional activities related to the CERTIFIED MANAGEMENT ACCOUNTANT mark which can be summarized as follows:

• television advertisements to promote the CERTIFIED MANAGEMENT ACCOUNTANT brand and skills of its members [see Exhibit 12 for samples];

• in-flight videos on Air Canada flights since at least as early as 2004 [see Exhibit 13];

• videos posted on YouTube from 2010 to 2012 [see Exhibit 14];

• print advertisements in newspapers and magazines. [see Exhibit 15 and 16 for samples];

• CMA Canada published its own magazine CMA Management from 1926 to 2013 until its last edition in November/December 2013. It was sold by subscription and was made available on CMA Canada’s website in 1996. Since at least as early as 1985 it has displayed the CERTIFIED MANAGEMENT ACCOUNTANT mark. [see Exhibit 17 for copies of sample pages from representative issues];

• Since 2007, CMA Ontario has published a monthly bulletin called Leading Indicator distributed to its members. The CERTIFIED MANAGEMENT ACCOUNTANT mark is displayed on each issue of the publication. [see Exhibit 18 for sample issues];

• Since at least as early as 1996, CMA Canada has provided information to its members students and the public on its website www.cma-canada.org. The CERTIFIED MANAGEMENT ACCOUNTANT mark is displayed on CMA Canada’s website [see Exhibit 19]. See Exhibit 20 for an article published on the website in 1996 discussing the CERTIFIED MANAGEMENT ACCOUNTANT designation and accreditation process;

• Since as early as 1996, CMAO has provided information to its members, students and the public on its website www.cmaontario.org where the CERTIFIED MANAGEMENT ACCOUNTANT mark is displayed [see Exhibits 21 and 22 for sample pages of this website];

• CMA Canada has promoted since at least as early as 2005 the CERTIFIED MANAGEMENT ACCOUNTANT mark through advertisements that appear on other Canadian websites [see Exhibit 23 for sample advertisements];

• CMA Canada and CMAO have promoted the CERTIFIED MANAGEMENT ACCOUNTANT mark and the skills of their members through the use of billboards, posters and transit advertising [See Exhibit 24 to 28 for samples];

• Since at least as early as 1990, CMAO has promoted the CERTIFIED MANAGEMENT ACCOUNTANT brand and skills of its members by creating, printing and distributing brochures that display the CERTIFIED MANAGEMENT ACCOUNTANT mark [see Exhibit 29 for sample brochures];

• There have been advertisements at Ontario universities since at least as early as 1997, carried out by CMAO [see Exhibit 30 for sample materials].

III.4 ICAO

[45]  Ms. Treasure explains that ICAO is an accounting body in the province of Ontario. It was incorporated in 1883 by the Accountants of Ontario Act, 1883. As of the date of execution of her affidavit, it was governed by The Chartered Accountants Act, (the CA ACT, 2010) [see Exhibit 31 and paragraph 72 of her affidavit for details]. ICAO’s designations include CHARTERED ACCOUNTANT and CHARTERED PROFESSIONAL ACCOUNTANT.

[46]  Ms. Treasure expects that once unification is finalized through new legislation, CMAO, ICAO and CGAO will operate as a single successor statutory entity. That statutory body will oversee the use of the various designations by its members including CHARTERED PROFESSIONAL ACCOUNTANT, CHARTERED ACCOUNTANT and CERTIFIED MANAGEMENT ACCOUNTANT.

III.4.i CHARTERED ACCOUNTANT Designation in Ontario

[47]  Ms. Treasure states that the use of CHARTERED ACCOUNTANT designation is regulated by ICAO. The exclusive right to use of the CHARTERED ACCOUNTANT designation in Ontario by ICAO’s members only was introduced by the CA Act, 1910 and this right continued pursuant to the CA Act, 2010 [see section 27 of the CA Act, 1910 at paragraph 77 of her affidavit].

[48]  Ms. Treasure affirms that ICAO grants the CHARTERED ACCOUNTANT designation to its members who have satisfied the certification requirements for the CHARTERED ACCOUNTANT designation. ICAO’s certification requirements include both qualification and practice standards [see Exhibit 32 for those qualification standards as published on ICAO’s website].

[49]  Ms. Treasure states that, to ensure that only authorized members are permitted to use the CHARTERED ACCOUNTANT designation in Ontario, ICAO has sought publication of such designation as an official mark in Canada, published on April 29, 2009. [See Exhibit 33 for copy of this official mark].

III.4.ii CHARTERED PROFESSIONAL ACCOUNTANT Designation in Ontario

[50]  Ms. Treasure explains that in Ontario the use of CHARTERED PROFESSIONAL ACCOUNTANT designation is regulated by ICAO. The CA Act, 2010 gives the ICAO the right to regulate its members’ use of accounting designations. Historically, CHARTERED ACCOUNTANT has been the core or primary designation for ICAO members in Ontario. However, in 2012 ICAO decided that it would make CHARTERED PROFESSIONAL ACCOUNTANT a core or primary designation for its members.

[51]  Ms. Treasure states that ICAO grants the CHARTERED PROFESSIONAL ACCOUNTANT designation to all its members who are in good standing [See Exhibit 34 for a listing of the qualification standards for use of the CHARTERED PROFESSIONAL ACCOUNTANT designation in Ontario].

[52]  Ms. Treasure adds that, as part of the unifying process, all members of CMAO and CGAO have become members of ICAO. As a result, CMAO members have too been granted the CHARTERED PROFESSIONAL ACCOUNTANT designation because they meet the certification requirements for the CHARTERED PROFESSIONAL ACCOUNTANT designation.

[53]  Ms. Treasure states that, to ensure that only authorized members are permitted to use the CHARTERED PROFESSIONAL ACCOUNTANT designation, ICAO sought its publication on August 24, 2011 as an official mark as well as CHARTERED PROFESSIONAL ACCOUNTANTS on October 9, 2013 [See exhibit 35 for certified copies of these official marks].

III.5 Summary of Some of the Designations in Force in Ontario by 2012

[54]  Consequently in early 2012, because of the existence of all these associations, the following designations could have been used by an accountant in Ontario depending on his (her) qualifications and membership status to one or more of the abovementioned accountants’ associations:

• Chartered Accountant or CA;

• Chartered Professional Accountant or CPA;

• Certified Management Accountant or CMA;

• Certified General Accountant or CGA.

 

No wonder why all these different accountant designations have been characterized as an “alphabet soup”. As it will appear later, there are more acronyms used by other Canadian and foreign accountants’ associations.

 

III.6 The Chartered Institute of Management Accountants and the present application

  III.6.i Ms. Treasure’s perspective

[55]  According to Ms. Treasure, the Mark when used in association with the Goods and Services clearly indicates that those goods and services are provided by an institute called The Chartered Institute of Management Accountants. For her, the meaning of The Chartered Institute of Management Accountants is a chartered institute or an institute incorporated by Royal Charter that provides goods and services for or on behalf of management accountants.

[56]  Ms. Treasure makes reference to CIMA’s website where it makes it clear that CIMA is a body incorporated by a Royal Charter in the UK [See Exhibit 38 for printouts from CIMA’s website]. In paragraph 94 of her affidavit she refers to extracts of the Royal Charter of CIMA listing its objects and in particular those related to promotion and development of Management Accountancy and the promotion in the interest of its members and the public.

[57]  Ms. Treasure affirms that CIMA promotes itself as the world’s largest and leading professional body of management accountants [see Exhibit 39 for extracts of CIMA’s website].

[58]  On the descriptiveness aspect of the Mark, Ms. Treasure attached to her affidavit:

• as Exhibit 40, the definition of the word “Charter” taken from www.dictionary.com;

• as Exhibit 41, an extract of The St. James Encyclopedia of Banking and Finance for the definition of “Management accounting”;

• as Exhibit 42, a printout from www.wikipedia.org for the definition of “management accounting or managerial accounting”.

[59]  Ms. Treasure attached as Exhibit 43, the file history of this application obtained from the Canadian Trade-mark Office. She states that the Canadian Trade-mark Office had objected to CIMA’s application on the basis that the Mark is clearly descriptive.

[60]  Ms. Treasure states that in response, CIMA filed the affidavit of Maggie Heasman sworn on December 4, 2012 and quotes extracts of paragraph 19 where Ms. Heasman refers to wares and services listed in the application. Ms. Treasure then lists those wares and services described in the application.

[61]  Ms. Treasure states that Ms. Heasman alleged that CIMA has promoted and sold products and services in Canada without specifying which ones were actually promoted and sold in Canada in association with the Mark. There was no evidence of any sales or performance of any product and service listed in the application.

[62]  Ms. Treasure mentions that Ms. Heasman alleges that there are CMA Canada members who are registered with CIMA. CIMA members provide accounting, financial and business related services. According to Ms. Treasure, those services are not provided by CIMA itself. Therefore any purported use of the Mark by Canadian CIMA members is really use of a certification mark and is not proof of CIMA’s use of the Mark. This is a conclusion in law that I shall disregard.

[63]  Ms. Treasure points out that in its application, CIMA alleges use of the Mark in Canada for each and every product and service listed in the application since at least as early as November 1986. She alleges that Ms. Heasman did not provide any evidence of use of the Mark in Canada dating back to November 1986 for each of the Products and Services.

[64]  Ms. Treasure states that she does not understand the meaning of some of the services he listed in paragraph 105 of his affidavit and I will discuss this issue when assessing later the ground of opposition based on section 30(a) of the Act.

III.6.ii Mr. Harding’s perspective

[65]  Mr. Harding has been, since May 2011, the managing director of The Chartered Institute of Management Accountants which has its head office located in London, England (CIMA-Global).

[66]  Mr. Harding states that CIMA-Global is a professional body of management accountants founded in 1919 in the United Kingdom. He provides a history of the various name changes. In late 1986, it adopted the current name.

[67]  Mr. Harding explains that CIMA-Global objectives are to promote and develop the profession of Management Accountancy and to foster and maintain the best means and methods of developing the profession of Management Accountancy; to encourage, increase, disseminate and promote knowledge, education and training and the exchange of information and ideas related to the field of Management Accountancy.

[68]  Mr. Harding states that CIMA-Global and its members are governed by the Royal Charter Bylaws and Regulations and CIMA’s Code of Ethics. Attached as Exhibit A to his affidavit is a copy of those documents.

[69]  Mr. Harding affirms that CIMA-Global has members in over 156 countries. He attached as Exhibit B screen shots of CIMA-Global’s website showing the countries where CIMA locations exist worldwide as well as copies from the linked dedicated web page to CIMA Canada. He states that CIMA Canada operates a website which offers comprehensive information that is of specific interest to its Canadian members, students, employers, educators and the general public.

[70]  Mr. Harding affirms that, since 1972, CIMA-Global has operated and continues to operate throughout Canada. On May 2, 2012, CIMA Canada chapters/branches incorporated as The Chartered Institute of Management Accountants, Canada Inc. Its activities were and are performed under a licence, and were and remain under the control of CIMA-Global. He states “Since 1972, CIMA-Global and CIMA Canada have continuously promoted its products and services to, and shared knowledge with, Canadian professionals and students, and the Canadian general public.”

[71]  I should mention at this stage, as pointed out by the Opponent, that the term CIMA Canada has not been defined specifically by Mr. Harding in his affidavit. Therefore, it is difficult to determine to which specific legal entity (or entities) Mr. Harding is referring to when he uses that term. I shall simply use “CIMA Canada” throughout this sub-section when summarizing Mr. Harding’s affidavit in the same fashion as it appears in Mr. Harding’s affidavit.

[72]  Mr. Harding affirms that CIMA-Global provides and offers to its members a full range of goods and services enumerated in paragraph 6 of his affidavit which are those enumerated in this application and reproduced in Annex A therein.

[73]  Mr. Harding attached as Exhibit C-1 to his affidavit screen shots of the various links appearing on the CIMA-Global’s website and as Exhibit C-2 selected random pages which are representative of all type of information, resources for members, students and professional support available to all CIMA members worldwide, including those of CIMA Canada and the public at large. He affirms that the CIMA, CIMA Logo, and CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS trademarks (CIMA-Global trademarks) have always and continue to be displayed on all pages and links.

[74]  Mr. Harding explains that CIMA-Global organizes and promotes world conferences. He cites, as examples, some of them at paragraph 8 of his affidavit. He affirms that these conferences are attended by people from all over the world, including persons residing in Canada. Promotional and advertising materials at these events always display the CIMA-Global trademarks.

[75]  Mr. Harding states that, in addition to hosting world conferences, CIMA-Global offers a variety of events throughout the year such as business challenges, members in practice events, and lectures. Examples of events hosted by CIMA-Global can be found on CIMA website under the section “Events” and he attached as Exhibit D a screen shot of the webpage which is representative of the type of events hosted by CIMA-Global. Promotional and advertising materials at these events have always displayed the CIMA-Global trademarks. These events are open to registration to all CIMA-Global members, including those of CIMA Canada.

[76]  Mr. Harding explains that CIMA-Global, the American Institute of Certified Public Accountants (AICPA) and CMA Canada jointly hosted an international conference entitled “The 2007 International Financial Executives Leadership Forum” and he attached as Exhibit E to his affidavit the press release dated September 27, 2007.

[77]  Mr. Harding adds that in 2007 and 2009, CIMA, CMA Canada and AICPA jointly authored a series of publications entitled “Management Accounting Guideline” (MAG series) which publications were available to all members of CIMA-Global, CIMA Canada, AICPA and CMA Canada. He attached as Exhibit F to his affidavit representative cover, publication and back pages of three publications of the MAG series. The cover page of each publication clearly displays the trademarks and logos of all three authors, CMA Canada, AICPA and CIMA-Global. The last page of each publication lists the coordinates for each author. The full version of these publications is available to all CIMA and CIMA Canada members on CIMA-Global website.

[78]  Mr. Harding states that in December 2010 CIMA-Global circulated a jointly authored publication entitled “Evolution of corporate sustainability practices- Perspectives from the UK, US and Canada”. He attached as Exhibit G to his affidavit the cover page, About page and last page of said publication. The cover page clearly displays the trademarks of the three author institutions, being the Canadian Institute of Chartered Accountants (CICA), AICPA, and CIMA. It was available to all CIMA-Global members, including CIMA Canada members.

[79]  Mr. Harding affirms that over the years CIMA-Global has entered into Mutual Recognition Agreements (MRAs) with CMA Canada. Information regarding the “CMA into CIMA” and “CIMA into CMA” MRAs are posted on the CIMA-Global website and he attached as Exhibit H the webpages downloaded with the CIMA-Global website providing information about the MRA. It is available for viewing by persons worldwide, including persons in Canada.

[80]  Mr. Harding provides CIMA annual income generated from Canadian membership fees from 2004 to 2014. It totals an excess of £2,300,000.

[81]  Mr. Harding makes reference to a court case in 2013 before the Ontario Superior Court of Justice which lead to the decision of Firestone J. dated November 22, 2013 between Certified General Accountants Association of Ontario and American Institute of Certified Public Accountants, Chartered Institute on Management Accountants, Canada, Inc., Chartered Institute of Management Accountants, Association of International Certified Professional Accountants and other individuals as Respondents. He states that based on that decision it should be concluded that neither the acronym CIMA nor THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS are prohibited by the CMA Act or the CA Act. He attached as Exhibit J a copy of the judgement and as Exhibit K the relevant sections of those Acts. I am disregarding his interpretation of this judgment as he has not been established as an expert in Canadian trademark law.

[82]  Mr. Harding explains that the letters CIMA represent “Chartered Institute of Management Accountants”. They are not and were never a “professional designation”. Similarly, the CHARTERED INSTITUTE OF CHARTERED ACCOUNTANTS is not and never was a “professional designation”. The professional designations awarded to qualifying CIMA-Global members are “ACMA”, which stands for “Associate Chartered Management Accountant”, “FCMA” which stands for “Fellow Chartered Management Accountant” and “CGMA” which stands for “Chartered Global Management Accountant”.

[83]  Mr. Harding attached as Exhibit L to his affidavit the pertinent extract from the CPA Ontario website that speaks to the MRA’s with foreign institutions. He also attached as Exhibit M excerpts from ICAO’s publications which were presented to Mr. Warner during his cross-examination where The Institute of Chartered Accountants of Ontario has itself provided information to its members and the public that distinguishes its organization from CIMA-Global.

[84]  I wish to point out that Mr. Harding, during his cross-examination, confirmed:

• Membership fees are paid in the UK (page 11)

• The website is managed from the UK (page 12)

• Exhibits C-1 and C-2 were probably downloaded in or about August 24, 2015 (page 13)

• The reference to CIMA Canada in paragraph 7 of his affidavit means that CIMA had members in Canada since 1972 as CIMA Canada was created only in 2012 (page 16)

• All the snapshots were downloaded between August 17 and August 24, 2015 (page 21)

• CIMA-Global by itself does not provide accounting services. Its members provide management accounting services to businesses (page 21)

• The members do not provide those services under one of the trademarks in issue (page 22)

• A person who achieve the Certificate in business accounting with CIMA can use the initials “CBA” (page 29)

• The CIMA professional qualification is what the members study for. They go through a series of currently 12 examinations plus often the certificate in business accounting. On achieving it, they would become Associate of the Institute and they would obtain the designation letters ACMA (page 30)

• FCAM is awarded on the basis of senior experience which is evidenced by submission of that experience (page 30)

• As of June 29, 2011 there were between 800 to 1,000 members of CIMA-Global in Canada (page 31).

 

III.6.iii Mr. Ratnayake’s perspective

[85]  Mr. Ratnayake has been a Board Member of The Chartered Institute of Management Accountants, Canada Inc. since 2005. He has been its Chair from May 2011 to May 2013 and since June 2013, he has been on the CIMA-Global Council.

[86]  Mr. Ratnayake defines The Chartered Institute of Management Accountants, Canada Inc. as “CIMA Canada”. Mr. Harding, in his affidavit, as mentioned earlier, has stated that The Chartered Institute of Management Accountants, Canada Inc. was incorporated on May 2, 2012. Therefore, there is some ambiguity regarding the status of CIMA Canada as defined by Mr. Ratnayake, for the period between 2005 and May 2012. Nevertheless, I shall use CIMA Canada in this sub-section of my decision the same way that Mr. Ratnayake has used it in his affidavit.

[87]  Mr. Ratnayake provides some corporate history about CIMA Canada which operates as a branch of the UK institution CIMA-Global, located in London, United Kingdom.

[88]  Mr. Ratnayake explains that CIMA Canada, at all times, has been authorized to use the CIMA acronym, CIMA logo and the words “The Chartered Institute of Management Accountants” in Canada. At all times, any and all use of the CIMA-Global trademarks was and currently remains under the direct control by CIMA-Global. He attached as Exhibit 1-D a copy of the license Agreement between CIMA-Global and CIMA Canada dated June 5, 2012 and as Exhibit 1-E By-Law No. 1 for The Chartered Institute of Management Accountants, Canada Inc, dated January 15, 2013.

[89]  Mr. Ratnayake states that use of the CIMA acronym and THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS commenced in Canada on or about November 1986 upon the change of name of CIMA-Global from “Institute of Cost and Management Accountant”. He explains how the CIMA Logo evolved over the years. Currently and since 2012 the CIMA Logo used appears on the Annual Review reports and samples are attached as Exhibit 15 to his affidavit.

[90]  Mr. Ratnayake states that discussions about establishing a CIMA Canada branch in Toronto began in 1969. He attached some historical notes about the development of CIMA Canada as Exhibits 2-A and 2-B.

[91]  Mr. Ratnayake affirms that in 2002, CIMA-Global amended its corporate guidelines to include new colour palette and provided details of their new image library of CIMA-Global trademarks. He attached as Exhibit 3 the correspondence from CIMA-Global dated May 23, 2002 related to CIMA-Global corporate guidelines.

[92]  Mr. Ratnayake states that since 2003, there has been Mutual Recognition Agreements (MRA) between CIMA-Global and CMA Canada that provide reciprocal memberships. He affirms that he cannot file them as there is a confidentiality agreement between the parties. He attached however, as Exhibit 5 to his affidavit, an email exchange between CIMA Canada and CIMA-Global dated October 21, 2003 announcing that CIMA and CMA Canada have concluded an agreement and as Exhibit 6 a letter dated October 3, 2003 from CIMA-Global to CIMA members announcing the alliance with Certified Management Accountants of Ontario defined in his affidavit as “CMA Canada”.

[93]  Mr. Ratnayake affirms that in 2005 a Canada Country plan study was done by CIMA-Global in order to increase the public awareness of CIMA-Global. He attached an email dated April 27, 2005 in which the Canada Country study is referred therein.

[94]  Mr. Ratnayake attached as Exhibit 9 a press release dated November 13, 2006 entitled “CIMA and CIMA Canada collaborate on generating leading-edge research”.

[95]  Mr. Ratnayake attached as Exhibit 10 an email exchange dated February 2, 2004 regarding the MRA agreement between CMA Canada and CIMA-Global and the requirements for becoming a member. He alleges that as a result of such MRA, many professional accountants residing and/or working in Canada are aware and familiar with CIMA and its tools available to them.

[96]  By the year 2007, CIMA-Global records indicate that a total of 1091 Canadian members registered with CIMA-Global. Mr. Ratnayake provides the annual Canadian membership enrolment from 2003 to 2007 inclusive. He states that, at the time of execution of his affidavit, there were 1417 Canadian resident members and students registered with CIMA-Global. At paragraph 23 of his affidavit, there is a table of the “Canadian Member Population, Canadian Student Population and Canada’s Total Population”.

[97]  Mr. Ratnayake explains that CIMA Canada receives its funds to operate from CIMA-Global based on annual budgets. The budget includes promoting and advertising of the services and products CIMA-Global offer and perform in Canada. He states that “the advertising expenditures for the CIMA-Global trademarks were through the distribution of promotional material such as, newsletters, magazines and brochures”.

[98]  Mr. Ratnayake attached as Exhibit 11 the financial statements of CIMA Canada and/or CIMA Toronto Branch for the years 1994 to 2014 inclusive.

[99]  Mr. Ratnayake provides a breakdown by year of grants received from CIMA-Global since 1994 which total approximately Cdn$1,137,000 as well as the annual expenditures for the years 1994 to 2014 which total approximately Cdn$800,000. He attached as Exhibit 12 an Excel sheet of itemized advertising expenses for the years 2007 to 2014 inclusive.

[100]  Mr. Ratnayake states that CIMA Canada holds Annual General Meetings (AGM) with its members and students. CIMA Canada distributes AGM notices to members and students. He attached as Exhibit 13 representative notices of CIMA Annual General Meetings for the years 1991, 1996, 1999, 2001, 2003, 2004 and 2005. They displayed the CIMA-Global trademarks. He adds that CIMA Canada newsletters announcing the AGM are distributed to all CIMA Canada members and students and he attached as Exhibit 14 samples of them which display the CIMA-Global trademarks.

[101]  Mr. Ratnayake states that CIMA Canada publishes an Annual Review which is distributed to its members and students. He attached as Exhibit 15 copies of them.

[102]  Mr. Ratnayake affirms that CIMA-Global provides direct advertising in Canada. Since December 2003, CIMA Canada has an active website. He attached as Exhibit 16 randomly selected web pages which have been downloaded from the CIMA Canada website. The CIMA Canada web pages have always and continuously displayed the CIMA-Global trademarks on the header which is carried on each page and link.

[103]  Mr. Ratnayake attached as Exhibit 17 a copy of an advertisement published in The Globe and Mail paper in 2013 as well as copies of brochures dated pre-2000, 2004 and 2007. These brochures were distributed to CIMA Canada members and students and prominently display the CIMA-Global trademarks.

[104]  Mr. Ratnayake attached as Exhibit 18-A randomly selected web pages downloaded from CIMA Canada website showing various events hosted by CIMA Canada between 1999 and 2015. He adds that at all times the CIMA-Global trademarks were displayed at these events. He attached as Exhibit 18-B photographs demonstrating how the CIMA-Global trademarks are typically displayed at the CIMA Canada events attended by CIMA Canada members.

[105]  Mr. Ratnayake affirms that since 2000, CIMA Canada holds an annual Cricket tournament in Toronto, Ontario. He attached as Exhibit 19-A representative invitations and various “Celebration of Cricket” brochures which have been distributed between the years 2006 to 2015 inclusive. He states that The Society of Management Accountants of Canada (now CMA Canada) and CMA Ontario have both supported the cricket tournament by way of monetary sponsorships. He provides the details of such sponsorships and he attached as Exhibit 19-B a photocopy of a cheque dated May 28, 2009 from CMA Canada in the amount of $ 1,000.00 for its 2009 sponsorship. CMA Ontario continued sponsorship up until 2014. It had advertisements in the “Event brochures” from 2008 to 2014, except for 2012.

[106]  Mr. Ratnayake states that CIMA Canada has continuously promoted its products and services in Canada by way of advertisements in various types of media, such as in newspapers, on television, posters on subway billboards and transit stations throughout Canada. He attached as Exhibit 20 copies of various types of advertising of CIMA Canada displaying the CIMA-Global trademarks.

[107]  Mr. Ratnayake explains that CIMA Canada offers a paid partnership program to connect employers with internationally trained management accountants who are new to Canada. He attached as Exhibit 21 a representative brochure providing information about the Paid Internship Program. The CIMA-Global trademarks are prominently displayed on these brochures.

[108]  Mr. Ratnayake affirms that CIMA Canada offers various conferences to its members, students and the general public. He attached as Exhibit 22 a representative brochure for the October 29, 2013 CIMA “Conference on Productivity” and sample flyers advertising the conference, which were circulated to members, student and the general public.

[109]  Mr. Ratnayake attached as Exhibit 23 photographs of representative products displaying the CIMA-Global trademarks.

[110]  Finally, Mr. Ratnayake describes the court proceedings before the Ontario Superior Court of Justice wherein CIMA Canada and CIMA-Global were named as parties and he attached as Exhibit 25 a copy of the Court decision dated November 22, 2013 and as Exhibit 26 some sections of the CMA Act, 2010 and the CA Act, 2010.

[111]  During his cross-examination Mr. Ratnayake stated:

• The control over the quality of the products and services was exercised by CIMA-Global by sending guidelines [see Exhibit 3] (page19)

• The designations used by CIMA are not CIMA, The Chartered Institute of Management Accountants, or any of the trademarks at issue in these proceedings (page 21). Those foreign designations are FCMA and ACMA (page 21)

• To become a CIMA member you study for the exams, then you become a member when you have the requisite work experience of about 3 years in a relevant accounting field (page 24)

• Generally, the income of CIMA Canada comes from CIMA-Global but there are occasions where the public buys tickets to attend events and those proceeds are part of CIMA Canada income (page 27)

• There is no analytical or number of visitors for the CIMA Canada website (page 29)

• The guidance for Ontario (Exhibit 1 to his cross-examination) was published after the enactment of the Accounting Professions Act in Ontario so that CIMA members would be aware of the new legislation and the use of their designations FCMA or ACMA (page 32-33).

• The photographs attached as Exhibit 23 to his affidavit represent products that were given away (page 35-36).

IV Similarities in the Parties’ activities and trademarks

[112]  Ms. Treasure draws a parallel between both parties’ associations:

• CMA Canada is an accounting body in Canada. CMA Ontario is an accounting body in Ontario. It is in the process of unifying its operations with ICAO, another accounting body in Ontario to operate under a new successor accounting body in Ontario;

• CIMA is an accounting body in the UK;

• She refers to CIMA’s website for a summary of its services which are similar to ICAO and CMAO’s services [See paragraphs 115 and 116 of her affidavit and Exhibit 45];

• CIMA’s objectives as described in Ms. Heasman’s affidavit are similar to those of ICAO, CMA Ontario and CMA Canada;

• ICAO regulates and governs the use of the CHARTERED ACCOUNTANT and CHARTERED PROFESSIONAL ACCOUNTANT designations in Ontario. It has qualification standards including education, examination and experience components;

• CMA Canada together with the Provincial CMA Bodies sets and administers accreditation programs for individuals who want to become members and be granted the CERTIFIED MANAGEMENT ACCOUNTANT designation in Canada. The accreditation programs have education, examination and experience requirements;

• CIMA sets and administers an accreditation program for individuals who want to become members of CIMA. [See Exhibit 46 for printouts of CIMA’s website that discuss its accreditation process];

• CMA Canada requires that members meet their practice standards of their Provincial CMA bodies including rules for professional conduct and continuing professional development;

• ICAO requires that its members meet its practice standards including rules for professional conduct and continuing professional development;

• CIMA sets practice standards for its members, which include rules for professional conduct and continuing professional development;

• ICAO, CMA Canada and CIMA are all active in promoting their members and the accounting profession in their respective jurisdictions.

[113]  Ms. Treasure alleges that there is an overlap in the parties’ customers in that:

• In her affidavit, Ms. Heasman states that many CMA Canada members have become members of CIMA;

• At paragraph 18 of her affidavit, Ms. Heasman states that CIMA products and services would only be utilized and of interest to CMA Canada members;

• In Ontario, CMA Canada members are also members of ICAO and CMAO.

 

V Final observations

[114]  Ms. Yurick has been an administrative assistant for the agent of record for the Applicant at the time of execution of her affidavit. She did a comparison of the contents of the affidavits of Ms. Treasure with the affidavit filed by Mr. Thomas E. Warner in other related opposition files. This comparison is not relevant for this opposition.

[115]  Ms. Yurick explains that on August 18, 2015 she conducted a search of CIPO Trade-marks database for all active trademarks comprising both the words “chartered” and “accountant*” in the mark and she lists in her affidavit 24 marks located and she attached as Exhibit E printouts of the search results and a printout of each of those marks located.

[116]  Ms. Yurick conducted on August 19, 2015 another search on Google Canada using as parameters “CIMA AND CMA MUTUAL RECOGNITION AGREEMENT”. She states that the search yielded approximately 6,200 hits and she attached as Exhibit F copies of the first six pages of the search results and copies of printouts of representative information contained at selected links of the Google Canada search.

[117]  Finally, Ms. Yurick attached as Exhibit G a copy of an Ontario Superior Court of Justice decision of Justice Firestone J. dated November 22, 2013 between Certified General Accountants Association of Ontario and AICPA, CIMA Canada, Chartered Institute of Management Accountants, Association of International Certified Professional Accountants and other individuals as Respondents.

[118]  Ms. Treasure states that CHARTERED ACCOUNTANT, CHARTERED PROFESSIONAL ACCOUNTANT, and CHARTERED PROFESSSIONAL ACCOUNTANTS are ICAO’s official marks. In Ontario, except for ICAO members, no individual is statutory permitted to use the designation CHARTERED ACCOUNTANT, alone or in combination with other words.

[119]  Ms. Treasure restates that CERTIFIED MANAGEMENT ACCOUNTANT is a certification mark registered by CPA Canada, successor in title to CMA Canada. CPA Canada licenses the mark to CMAO to use in Ontario. She adds that in Ontario, CERTIFIED MANAGEMENT ACCOUNTANT designation is currently regulated by CMAO. In Ontario, except for CMAO members, no individual is statutorily permitted to use the designation CERTIFIED MANAGEMENT ACCOUNTANT, alone or in combination with other words.

[120]  Ms. Treasure expects, once formally merged with CMAO, that these bodies will operate as a single successor entity and this entity will oversee the use of the designations CHARTERED ACCOUNTANT and CHARTERED PROFESSIONAL ACCOUNTANT in Ontario, as well as the designation CERTIFIED MANAGEMENT ACCOUNTANT.

[121]  Ms. Treasure also discusses the similarities between the parties’ trademarks in issue. I shall disregard her analysis as Ms. Treasure has not been established as an expert in trademark law.

[122]  I should point out that prior to 2012, the acronym CPA in Ontario stood for “Certified Public Accountant” and not “Chartered Professional Accountant”. Finally, as mentioned before, there is no evidence of use in Canada in the record, within the meaning of section 4(2) of the Act, of the designation Certified Public Accountant or its acronym CPA, as trademarks, by the Opponent or its predecessors in title prior to the autumn 2012.

[123]  As described above, the accounting profession in Canada is regulated provincially. There are provincial and national associations. These oppositions are governed by the Act and the Registrar has no authority derived from the various provincial statutes cited above. Furthermore, it is not up to the Registrar to decide if the adoption and/or use of any of the trademarks applied-for contravene any provincial legislation [see Canadian Council of Professional Engineers v Lubrication Engineers, [1992] 2 FC 329 (FCA)] regulating the use of a professional designation. I shall discuss in greater detail this particular issue when addressing the ground of opposition based on section 30(i) of the Act.

[124]  It is in this context that I shall now assess the grounds of opposition pleaded in the present file.

VI Legal Onus and Burden of Proof

[125]  The legal onus is on the Applicant to show that the application does not contravene the provisions of the Act as alleged in the statement of opposition. This means that if a determinate conclusion cannot be reached in favour of the Applicant once all the evidence is in, then the issue must be decided against the Applicant. However, there is also an evidential burden on the Opponent to prove the facts inherent to its pleadings. The presence of an evidential burden on the Opponent means that in order for a ground of opposition to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that ground of opposition exist [see Joseph E Seagram & Sons Ltd et al v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 (TMOB); John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) and Wrangler Apparel Corp v The Timberland Company (2005), 41 CPR (4th) 223 (FCTD)].

VII The Material Dates

[126]  The material dates for each ground of opposition pleaded are:

• i) grounds of opposition based on section 30 of the Act: the filing date of the application or the priority date (April 18, 2011) [see Delectable Publications Ltd v Famous Events Ltd (1989), 24 CPR (3d) 274 (TMOB) regarding section 30(a); Georgia-Pacific Corporation v Scott Paper Ltd (1984), 3 CPR (3d) 469 at 475 (TMOB) regarding s. 30(b); and Tower Conference Management Co v Canadian Management Inc (1990), 28 CPR (3d) 428 (TMOB) for section 30(i)];

• ii) ground of opposition based on section 12(1)(e): the date of the Registrar’s decision [see Park Avenue Furniture Corp v Wickes/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)];

• iii) ground of opposition based on section 12(1)(d): the date of the Registrar’s decision [see Park Avenue Furniture Corp, op.cit.];

• iv) ground of opposition based on sections 16(1)(a): the claimed date of first use (November, 1986) [ see Khan v Turban Brand Products Ltd (1984), 1 CPR 3d 388 (TMOB) and section 16(1) of the Act]; and

• v) ground of opposition based on lack of distinctiveness of the Mark: the filing date of the statement of opposition (May 9, 2014) [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FCTD)].

[127]  As for the ground of opposition based on section 12(1)(b) of the Act, the Opponent argues that the material date is the date of the Registrar’s decision and it refers to Canadian Professional Engineers v Lubrication Engineers Inc (1992), 41 CPR (3d) 243 (FCA). I note that, in its written argument, while referring to Fiesta Barbeques Ltd v General Housewares Corp (2003), 28 CPR (4th) 60 (FCTD), the Applicant claimed that the material date is the date the opposition is decided. However, at the hearing it mentioned that the material date is the filing date of the application, which is the correct interpretation of Fiesta Barbeques.

[128]  Since Fiesta Barbeques, the Registrar has taken the position that the material date to determine the registrability of a trademark under section 12(1)(b) is the filing date of the application, as section 12(2) of the Act clearly specifies that a trademark that is not registrable under 12(1)(b) may nevertheless be so if the applicant can demonstrate, at the filing date of the application, the trademark has been so used in Canada as to have become distinctive.

[129]  I consider the material date for a ground of opposition based on section 12(1)(b) of the Act to be the filing date of the application or its priority date (April 18, 2011).

VIII Ground of Opposition Based on Section 30(f) of the Act

[130]  For ease of reference I reproduce the ground of opposition pleaded:

contrary to section 30(f), as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and at all relevant times, the Application does not contain particulars of the defined standard that the use of the alleged mark by authorized persons of the Applicant or the Applicant's members in association with services which include "accounting services; accounting auditing; business auditing; business management services; business management consulting services; provision of information regarding third party businesses; business policy review, development and implementation services; business problem identification, analysis and resolution services; business assistance in identifying and prioritizing tasks; financial analysis; financial appraisals; financial forecasting, financial investment counseling; financial analysis consultation services; financial planning; financial management; research and study services relating to accountancy and finance; professional advisory, information and consultancy services all relating to the research, analysis and development of new and existing organisational and business models, structures, practices and strategies", is intended to indicate, and a statement that the Applicant is not engaged in the performance of services provided by authorized persons of the Applicant or the Applicant's members, in association with which the certification mark is used`.

[131]  The Opponent argues that the services outlined in this ground of opposition should have been covered by an application for a certification mark. The Opponent contends that since the application should have been filed for the registration of a certification mark, it should have contained particulars of the defined standard that the use of the Mark is intended to indicate and a statement that the Applicant is not engaged in the performance of services such as those in association with which the certification mark is used. Such failure constitutes, according to the Opponent, an independent ground for refusing the application.

[132]  The Applicant argues that it was at liberty to file an application to register the Mark either as a “regular mark” or as a “certification mark”. Since the application was filed for the registration of a “regular mark”, it was not necessary that the application contains particulars of the defined standard that the use of the Mark is intended to indicate and a statement that the Applicant is not engaged in the performance of the services mentioned under this ground of opposition.

[133]  Finally, the Applicant refers to the affidavit of Mr. Harding where he stated clearly that the Mark is not used as a professional designation.

[134]  I agree with the Applicant. It had the choice to file an application to register the Mark as a “regular mark” or as a “certification mark”. There are certain conditions that need to be met in order to obtain a “certification mark” and perhaps the Applicant was not in a position to meet those requirements. In any event, it is not relevant to speculate on the reasons why the Applicant may have decided to file its application to register the Mark as a “regular mark”.

[135]  Therefore, the ground of opposition based on section 30(f) of the Act is dismissed.

IX Ground of opposition based on Section 30(i) of the Act

[136]  Section 30(i) of the Act only requires the Applicant to declare that it is satisfied that it is entitled to use the Mark in Canada in association with the goods and services described in the application. Such a statement is included in this application. An opponent may rely on section 30(i) in specific cases such as where bad faith by the applicant is alleged [see Sapodilla Co Ld v Bristol Myers Co (1974), 15 CPR (2d) 152 (TMOB)] or where there is a violation of a federal statute. There is no allegation of bad faith in the statement of opposition or any evidence in the record to that effect.

[137]  There are three separate grounds of opposition based on section 30(i) of the Act, namely:

• contrary to section 30(i), the Applicant cannot have been satisfied that it was entitled to use the alleged mark in Canada as of the priority filing date in that, contrary to section 34, the priority claim based on UK application no. 2578969 is invalid because as of the filing date of the Application, the application filed in the UK was not made by the same applicant. Specifically, the UK application was filed in the name of "The Chartered Institute of Management Accountants". The subject Application was filed in the name of "Chartered Institute of Management Accountants".

• contrary to section 30(i), the Applicant cannot have been satisfied that, as of the alleged date of first use, the priority filing date (which is invalid), the date of filing of the Application and/or at all relevant times, it was entitled to use the alleged mark in Canada because there was and is no legal entity named "Chartered Institute of Management Accountants".

• contrary to section 30(i), the Applicant cannot have been satisfied that, as of the alleged date of first use, the priority filing date (which is invalid), the date of filing of the Application and/or at all relevant times, it was entitled to use the alleged mark in Canada in association with the goods and services described in the Application because the Applicant knew, or ought to have known that, as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and/or at all relevant times, the alleged mark for use in association with the goods and services described in the Application, was and is,

• § a prohibited mark contrary to section 9(1)(n)(iii), in that the alleged mark consists of, or so nearly resembles as to be likely to be mistaken for, the Opponent's official marks

• CHARTERED ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on April 29, 2009 under No. 916,584;

• CHARTERED PUBLIC ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on May 4, 2011 under No. 920,690;

• CHARTERED PROFESSIONAL ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on August 24, 2011 under No. 921,244;

• CHARTERED PROFESSIONAL ACCOUNTANTS, for which public notice was given under s.9(1)(n)(iii) on October 9, 2013 under No. 922,429; and

• CERTIFIED PUBLIC ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on March 30, 2011 under No. 920,688;

• § confusing with the trade-marks CHARTERED ACCOUNTANT; CHARTERED PUBLIC ACCOUNTANT; CHARTERED PROFESSIONAL ACCOUNTANT; CHARTERED PROFESSIONAL ACCOUNTANTS and CERTIFIED PUBLIC ACCOUNTANT, all previously used and/or made known in Canada by the Opponent, the Opponent's predecessor in title, namely, Certified Public Accountants Association of Ontario (the "CPAAO") and/or their licensees in association with goods and services including printed and educational publications in the field of accounting, educational and information services in the field of accounting, certification services in the field of accounting, providing accounting services and promoting and maintaining high standards in the accounting profession, prior to the Applicant's alleged date of first use, the priority filing date (which is invalid) and/or the date of filing the Application;

• § confusing with the certification mark CERTIFIED MANAGEMENT ACCOUNTANT, previously used or made known in Canada and previously registered in Canada under registration no.TMA769,859 by Chartered Professional Accountants of Canada or its predecessor in title, The Society of Management Accountants of Canada (collectively referred hereinafter as "CMA Canada"), in association with identifying, measuring, accumulating, analyzing, preparing, interpreting and communicating information used by businesses to plan, evaluate and control appropriate use of resources; and preparing financial reports for shareholders, creditors, regulatory agencies and tax authorities, prior to the Applicant's alleged date of first use, the priority filing date (which is invalid) and/or the date of filing the Application;

• § confusing with the trade-mark CERTIFIED MANAGEMENT ACCOUNTANT, previously used or made known in Canada by the Opponent, formerly Certified Management Accountants of Ontario ("CMAO"), also previously known as The Society of Management Accountants of Ontario, and/or by CMA Canada in association with goods and services including printed and educational publications in the field of management accounting, educational and information services in the field of management accounting, establishing and enforcing guidelines in the field of management accounting, providing accounting services, identifying, measuring, accumulating, analyzing, preparing, interpreting and communicating information used by businesses to plan, evaluate and control appropriate use of resources; and preparing financial reports for shareholders, creditors, regulatory agencies and tax authorities, prior to the Applicant's alleged date of first use, the priority filing date (which is invalid) and/or the date of filing the Application;

• § clearly descriptive or deceptively misdescriptive of the character or quality of the goods and services described in the Application in that it clearly describes or deceptively misdescribes that the goods and services of the Applicant are offered by or related to a chartered institute or an institute incorporated under Royal Charter, which provides goods and services for or on behalf of management accountants, and that the alleged mark has not been so used in Canada by the Applicant as to have become distinctive at the date of filing the Application;

• § a certification mark which cannot be used by the Applicant in the performance of services provided by authorized persons of the Applicant or the Applicant's members, who use the alleged mark as a certification mark to indicate that they or their services have met the standards established by the Applicant; and

• § a mark the use of which is prohibited by Ontario's Chartered Accountants Act, 2010, S.O. 2010, c.6 Sch. C and Certified Management Accountants Act, 2010, S.O. 2010, c. 6, Sch. B and/or their predecessor legislation; and by Ontario's Chartered Professional Accountants of Ontario Act, 2017, S.O. 2017, c. 8,Sch. 3.

[138]  The first two prongs described above have not been pursued by the Opponent. The Opponent declared at the hearing that it would no longer be pursuing the section 30(i) grounds based on the alleged improper identification of the Applicant.

[139]  Therefore, those two prongs of this ground of opposition do not need to be assessed.

[140]  Except for the last sub-paragraph of the last prong, this ground of opposition is simply repetitive of other grounds of opposition pleaded by the Opponent namely, that the Mark is confusing with the Opponent’s trademarks (grounds of opposition based on sections 2, 16(1)(a), 12(1)(d), and that the Mark so nearly resembles as to be likely to be mistaken for the Opponent’s official marks listed above (ground of opposition under section 12(1)(e)); the Mark is clearly descriptive or deceptively misdescriptive of the character or quality of the Goods and Services (section 12(1)(b) ground of opposition); and the application should have been filed for the registration of a certification mark.

[141]  I will assess later those specific grounds of opposition, except for the certification mark issue, which I have already addressed, and the prohibition contained in provincial statutes which I will discuss immediately.

[142]  The Opponent is arguing that the Federal Court of Appeal’s decision in Lubrication Engineers, Inc, supra, is not a precedent upon which the Registrar can rely to support a conclusion that it is not appropriate to support a ground of opposition based on section 30(i) of the Act on non-compliance with provincial statutes.

[143]  At the outset, as noted by the Applicant, some of the provincial statutes relied upon by the Opponent to support its ground of opposition was not in force at the material date, namely June 29, 2011, the filing date of the application. The Ontario’s Chartered Professional Accountants of Ontario Act, 2017, S.O. 2017, c. 8, Sch. 3 came into force on May 17, 2017.

[144]  Notwithstanding the Opponent’s position to the contrary, the Federal Court of Canada, Appeal Division’s decision in Lubrication Engineers, Inc, is still proper authority to support a conclusion that it is not appropriate to support a ground of opposition based on section 30(i) of the Act on non-compliance with provisions found in provincial statutes.

[145]  In any event, even if I were to consider potential non-compliance with a provincial statute as relevant under section 30(i), I would have found that the use of the Mark would not be prohibited by those provincial statutes for the reasons detailed below.

[146]  Prior to the hearing, I brought to the parties’ attention the following recent decisions: Orphan Well Association v Grant Thornton 2019 SCC 5 and Royal Demaria Wines Co Ltd v Lieutenant Governor in Council, 2018 ONSC 7525. A third decision of interest was brought up by the Applicant: Certified General Accountants Association of Ontario v American Institute of Certified Public Accountants [2013] O.J. No. 5630, rendered by the Ontario Superior Court of Justice and referred to by Mr. Harding and Mr. Ratnayake in their affidavits as detailed above.

[147]  In Grant Thornton, the Supreme Court reiterated the principle that, in order to trigger the doctrine of federal paramountcy, there needs to be a conflict between provincial and federal legislation.

[148]  In Royal Demaria, the Ontario Superior Court of Justice stated:

[66] Conflicts triggering the federal paramountcy doctrine will arise in one of two situations:

(a)          There is an operational conflict that arises because it is impossible to comply with both laws; or

(b)         Although it is possible to comply with both laws, the operation of the provincial law frustrates the purpose of the federal enactment. (Alberta (Attorney General) v. Moloney, [2015] 3 S.C.R. 327, 2015 SCC 51 (CanLII), at para. 18).

[67] There are several principles that a court must keep in mind when considering an argument based on the doctrine of paramountcy:

(i)           The burden of proof to establish a conflict between federal and provincial legislation rests on the party alleging such a conflict. Discharging that burden is not an easy task. (Ibid, at para. 27);

(ii)          The approach of the courts is to embrace cooperative federalism and recognize concurrent federal and provincial jurisdiction in their respective domains. Paramountcy is to be applied with restraint, under the presumption that Parliament intends its laws to co-exist with provincial law. (Ibid);

(iii)         The federal Parliament legislating in respect of a matter does not lead to a presumption that it intended to rule out provincial legislation in respect of the same subject (Canadian Western Bank v. Alberta, [2007] 2 S.C.R. 3, 2007 SCC 22 (CanLII), at para. 74); and

[68] Unless there is a genuine inconsistency, the court will favour an interpretation of the federal legislation that allows the concurrent operation of both laws. (Moloney, at para. 27). Where the court can interpret a federal statute so as not to interfere with a provincial statute that interpretation is to be preferred. (Western Bank, at para. 75).

[149]  It is interesting to note that in Royal Demaria the Court had to decide if there was any conflict between Vintner’s Quality Alliance Act, 1999, S.O. 1999, c.3 and the Trademarks Act. The Court concluded that it was possible to interpret the relevant portions of the Vintner’s Quality Alliance Act without creating a conflict with the Trademarks Act.

[150]  In Certified General Accountants Association of Ontario, CGAO (as defined above) brought an application against Chartered Institute of Management Accountants, Canada Inc. and the AICPA, amongst others, for a statutory injunction pursuant to section 30(1) of the Certified General Accountants Act, 2010, S.O. 2010, c. 6 (CGA Act) to enjoin the defendants from using, yet another designation namely, CGMA.

[151]  The CGA Act prohibits any person, other than a member of CGAO, “to take or use ….the initials “C.G.A.”, “CGA”, “F.C.G.A.” or “FCGA”.” The defendants were using the designation-acronym CGMA or Chartered Global Management Accountant. The Court dismissed the application and interpreted restrictively the relevant provisions of the CGA Act. The Court concluded that the use of CGMA does not suggest a “Certified General Accountant” and as such a member of the public would not be confused with the designation CGA or Certified General Accountant.

[152]  Royal Demaria stands for the proposition that we should try to interpret a provincial statute without creating a conflict with a federal statute. Moreover, the Ontario Superior Court in Certified General Accountants Association of Ontario interpreted restrictively the provisions of a provincial statute regulating the use of accountants’ designations.

[153]  The Mark is not made of initials and is not a professional designation. Using a strict interpretation of the prohibition specified in a provincial statute, as concluded in Certified General Accountants Association of Ontario, I conclude that the use of the Mark would not be prohibited by those provincial statutes.

[154]  For all these reasons I dismiss the ground of opposition based on section 30(i) of the Act as reproduced in Annex B.

X Ground of Opposition Based on Section 30(a) of the Act

[155]  For ease of reference I reproduce the ground of opposition as pleaded:

contrary to section 30(a), at the priority filing date (which is invalid), the date of filing the Application and at all relevant times, the Application does not contain a statement in ordinary commercial terms of the specific services in association with which the alleged mark is alleged to have been used in Canada, in that,

• the services which include "promoting the business and career interests of certified management accountants through online advertising on applicant's website; provision of information regarding third party businesses; association services, namely promoting and supporting the interests of the certified management accountants" are not real services provided to the public because they are simply to make the public aware of the services provided by authorized persons of the Applicant or the Applicant's members. Alternatively, if these are real services provided to the public, they are not described in ordinary commercial terms because they do not specify the types of information that are provided regarding third party businesses, or the means or manner by which the promotional and support services are provided;

• the services which include "accounting services; accounting auditing; business auditing; business management services; business management consulting services; provision of information regarding third party businesses; business policy review, development and implementation services; business problem identification, analysis and resolution services; business assistance in identifying and prioritizing tasks; financial analysis; financial appraisals; financial forecasting, financial investment counseling; financial analysis consultation services; financial planning; financial management; research and study services relating to accountancy and finance; professional advisory, information and consultancy services all relating to the research, analysis and development of new and existing organisational and business models, structures, practices and strategies" are services provided by authorized persons of the Applicant or the Applicant's members who have met the standards established by the Applicant, for use of a certification mark and thus, these services should be described in ordinary commercial terms in association with a certification mark, and not an ordinary trade­ mark; and

• the services which include "association services being the certification of services provided by members of an association in the field of accountancy and finance" are not real services provided to the public by the Applicant because they are simply referring to the nature of the services provided by authorized persons of the Applicant or the Applicant's members, in association with a certification mark, and not to any real services provided by the Applicant, in association with an ordinary trade­ mark.

[156]  With respect to the first prong, the Applicant argues at paragraph 51 of its written argument that there are registrations on the register where the services are described in similar terms. I am disregarding this argument as paragraph 51 of the Applicant’s written argument contains references to the register which have not been put into evidence in the record.

[157]  The Applicant is arguing that the Opponent has not introduced any evidence that would support this ground of opposition. In fact, the Opponent in its written argument simply repeat the wording used in the Act and in its statement of opposition.

[158]  The Opponent’s argument in the first prong that the services described therein are not real services provided to the public because they are simply to make the public aware of the services provided by the Applicant’s own members is, with all due respect, ill founded. The public benefits from the use of the Mark. The Applicant is a professional accountancy organization which provides services to promote the interests of qualified individuals in the field and provides information and advice to the public in the field of accountancy, and provides a service which benefits the public [see paras 67 to 79, 98 and 102 to 109 above].

[159]  As for the alternative argument described in the first prong, a statement of services does not need to be as specific as a statement of goods [see Everything for a Dollar Store (Canada) Inc v Dollar Plus Bargain Centre Ltd, 1998 CarswellNat 2998]. Moreover, the Opponent has not provided any evidence to support such contention. I would add that, as pointed out by the Applicant, Ms. Treasure used in paragraph 10 of her affidavit a similar language, i.e. “CMA Canada represents the interests of management accountants in Canada”.

[160]  With respect to the Opponent’s argument that the services described in the second and third prong of that ground of opposition are not real services provided to the public because they are simply referring to a function of the alleged mark, it is the same argument raised under the section 30(f) ground of opposition, put in a different way namely, the application should have been filed for the registration of a certification mark. I already disposed of that argument.

[161]  For all these reasons, I dismiss this ground of opposition.

XI Ground of Opposition based on Section 12(1)(e)

[162]  For ease of reference I reproduce the ground of opposition as pleaded:

contrary to section 12(1)(e), as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and/or at all relevant times, including the date of the Registrar's decision, it was and is, a mark the adoption of which is prohibited by section 9(1)(n)(lii), in that the alleged mark consists of, or so nearly resembles as to be likely to be mistaken for, the Opponent's official marks

CHARTERED ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on April 29, 2009 under No. 916,584;

CHARTERED PUBLIC ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on May 4, 2011 under No. 920,690;

CHARTERED PROFESSIONAL ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on August 24, 2011 under No. 921,244;

CHARTERED PROFESSIONAL ACCOUNTANTS, for which public notice was given under s.9(1)(n)(iii) on October 9, 2013 under No. 922,429; and

CERTIFIED PUBLIC ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on March 30, 2011 under No. 920,688.

 

[163]  There is no evidence of the existence of any of these official marks. However, I exercised my discretion and check the register. They are all extant [see GH Mumm & Cie et al v Registrar of Trade-marks (1982), 64 CPR (2d) 223 (FCTD)]. Therefore, the Opponent has met its initial evidential burden.

[164]  I consider official marks CHARTERED PUBLIC ACCOUNTANT No. 920,690 and CHARTERED PROFESSIONAL ACCOUNTANTS, No. 922,429 to be the most pertinent ones. If the Opponent is not successful with these official marks, it would not achieve a better result with the other official marks listed above.

[165]  The first citation was published prior to the material date while the other was published after the material date. The Opponent relies on the decision of Canadian Olympic Association v Olympus Optical Co (1991), 38 CPR (3d) 1 (FCA) to support the argument that, no matter when public notice of an official mark was given, even after the filing date of a pending application, such notice obliges by statute the Registrar to give full effect to the prohibition thus created.

[166]  Section 12(1)(e) of the Act stipulates that:

12 (1) Subject to section 13, a trademark is registrable if it is not:

(e)  a mark of which the adoption is prohibited by section 9 or 10.

[167]  The Applicant, at the hearing, argued that in Olympus the Court referred to Canadian Olympic Association v Allied Corp (1989), 28 CPR (3d) 161 (FCA) wherein it was ruled that earlier use of a trademark is not caught by the subsequent publication of an official mark. The Applicant debated that the situation in Olympus was distinguishable from Allied as in Olympus the Court had to deal with an earlier pending application and not an earlier use.

[168]  The Applicant went on to do an analysis of the language and tense used in sections 9(1)(n)(iii), 12(1)(e) and 2 of the Act to conclude that the material date to dispose of this ground of opposition would be the date of filing of the application. It claimed that such analysis was not made in Allied and as such it would be open for the Registrar to revisit this issue.

[169]  I am not prepared to follow the path suggested by the Applicant. The Federal Court of Appeal was quite clear in Allied, that an official  mark, published after the filing date of an application, which is still pending, will constitute a bar to the registration of that pending application.

[170]  In Canadian Council of Professional Engineers v APA- Engineered Wood Assn (2000), 7 CPR (4th) 239 (FCTD) the Court concluded that in order to offend subparagraph 9(1)(n)(iii) so as to be unregistrable under paragraph 12(1)(e), a proposed mark must either be identical to the official mark or so nearly resemble it so as to be likely to be mistaken for it.

[171]  The test therefore requires consideration of more circumstances than the “straight comparison” test, and consideration can be given to the degree of resemblance in appearance or sound or in the idea suggested.

[172]  The test does not allow, however, for consideration of all the circumstances under subsection 6(5) of the Act, and therefore the nature of the goods and/or services are not relevant circumstances for the purposes of confusion between an official mark and a regular mark. Consequently, the fact that both parties’ services relate to the accounting field and are provided to accountants is not relevant in the context of this ground of opposition.

[173]  I agree with the Applicant that the Mark is clearly not identical to the Opponent’s official marks CHARTERED PUBLIC ACCOUNTANT and CHARTERED PROFESSIONAL ACCOUNTANTS. The Mark contains the additional words THE, INSTITUTE, OF and MANAGEMENT.

[174]  The Opponent argues the existence of a family of official marks listed under this ground of opposition. The Federal Court of Appeal accepted the argument of family of official marks but in the context of an analysis under section 6 of the Act, which is not the case here. The ground of opposition under analysis is based on section 12(1)(e), wherein section 6 is not in issue [see Techniquip Ltd v Canadian Olympic Assn (1999) 3 CPR (4th) 298 (FCA)].

[175]  As stated in McDonald’s Corp v Yogi Yogurt Ltd (1982) 6 CPR (2d) 101 (FCTD), in order to substantiate the existence of a family of trademarks, not only registration of the marks must be proven, there must be evidence of use of each one of them. I am fully aware that the Yogi Yogurt Ltd decision was rendered in the context of a section 12(1)(d) ground of opposition. If the concept of a family of marks is applicable to a family of official marks, I do not see why, by analogy, the principle enunciated in Yogi Yogurt would not equally apply to a family of official marks.

[176]  There is no evidence of use of any of the official marks cited by the Opponent within the meaning of section 4(2) of the Act. Consequently, the official mark CHARTERED ACCOUNTANT cannot benefit from a wider scope of protection derived from the existence of a family of official marks.

[177]  The addition of the words THE, INSTITUTE, OF and MANAGEMENT makes the Mark, as a whole different visually, in sound and in the idea suggested by the Mark, when comparing it to the Opponent’s official marks CHARTERED PUBLIC ACCOUNTANT and CHARTERED PROFESSIONAL ACCOUNTANTS. The Mark refers to a chartered association or institute while the Opponent’s official marks suggest a professional designation.

[178]  Consequently, I dismiss this ground of opposition.

XII Ground of Opposition based on Section 30(b) of the Act

[179]  As for any grounds of opposition raised by the Opponent, it has the initial burden of proof. It is light because the facts regarding an applicant's first use are particularly within the knowledge of the applicant.[see Tune Masters v Mr P's Mastertune Ignition Services Ltd (1986), 10 CPR (3d) 84 (TMOB) at p. 89]. This burden may be met by reference not only to the opponent's evidence but also to the applicant's evidence [see John Labatt Ltd v Molson Cos (1990), 30 C.P.R. (3d) 293 (FCTD), at 89]. However, while an opponent may rely upon the applicant's evidence to meet its evidential burden in relation to this ground, in order to do so, it must show that the applicant's evidence is "clearly" inconsistent with the applicant's claims set forth in its application [see Ivy Lea Shirt Co v Muskoka Fine Watercraft & Supply Co (1999), 2 CPR (4th) 562 (TMOB), at 565 -6, aff'd (2001), 11 CPR (4th) 489 (FCTD)].

[180]  The Opponent refers to the following goods and services included in the Goods and Services:

Goods:

computer software for collecting, retrieving, and calculating financial statistics, and creating reports thereof in the field of management accountancy; computer software for collecting, retrieving, and calculating financial statistics, and creating reports thereof, and for providing electronic books, study guides and study courses to assist with examination preparation in the field of management accountancy downloadable from the Internet; USB drives featuring information on accounting management services, auditing services, business management services, and professional association services in the field of management accounting; MP3s, JPEGs, MPEGs, CDs and DVDs featuring information relating to management accountancy; recordings of sound and images stored in digital or analogue form, namely universal bus flash drives, MP3s, JPEGs, MPEGs, video discs, CDs, mini discs, DVDs, audio tapes and video tapes, featuring information relating to management accountancy;

Services:

promoting the business and career interests of certified management accountants through online advertising on applicant's website; production and rental of educational audio tape, film, video, MP3s, JPEGs, MPEGs, CDs and DVDs in the field of management accountancy;

[181]  The application was filed on the basis of use since at least as early as November 1986 , which is assumed to be the last day of that month [see Lise Watier Cosmétiques Inc v Villoresi 2009 CarswellNat 1700 (TMOB)] in association with all of the Goods and Services. However, the Opponent argues that the goods and services listed in the previous paragraph did not exist on November 30, 1986. In fact Mr. Harding admitted that the list of Goods and Services, contained in paragraph 6 of his affidavit (3 pages long), includes items that would not have been in existence on November 30, 1986, such as DVDs, USB drives, and items that are downloadable from the Internet. He also mentioned that he did not look specifically for the information related to the Applicant’s activities in Canada in preparation for the drafting of his affidavit but for the Applicant’s activities worldwide. Moreover, when asked if he could provide a list of the goods that were sent to Canada and which services were provided in Canada in November 1986 he could not. Finally, he could not provide the date on which the Applicant first provided the Goods and Services in Canada [see Harding transcript at pages 18 to 20 inclusive].

[182]  Moreover, during his cross-examination, Mr. Harding also admitted that the Applicant does not render the accounting services described in the application. It is its members who provide them and they are not provided in association with the Mark. Finally, there is no evidence of the existence of a license agreement between the Applicant and its members to use the Mark in association with these services.

[183]  The Opponent argues that it has met its light evidential burden and has put serious doubt on the validity of the date of first use claimed in the application in association with each of the Goods and Services.

[184]  The Applicant, at the hearing, suggested that the case be split in two parts; the goods and services not used as of November 30, 1986 and the second portion, the others. It argues that the questions asked to Mr. Harding were too general and that is why he was unable to provide an answer. Moreover, it argues that the content of the affidavit of Mr. Harding does not affect the initial evidentiary burden under a section 30(b) ground of opposition as it was filed for the purposes of the sections 12(1)(b) and 2 grounds of opposition and the relevant date is the filing date of the application. Mr. Harding’s affidavit is dated after the relevant date. Finally, the Applicant submits that the claimed date of first use coincides with the Applicant’s name change and therefore there are no inconsistencies with the claimed date of first use alleged in the application.

• [185] I agree with the Opponent. Under this ground of opposition, it has a light evidential burden as all the information concerning the claimed date of first use of the Mark in Canada should be within the knowledge of the Applicant. The Opponent has raised serious inconsistencies. The very nature of some of the goods and services as described above could not have been offered or sold in Canada as of the claimed date of first use. It has been admitted by Mr. Harding during his cross-examination. Also Mr. Harding was asked if he knew the date of first use for each of the items listed in the application and reproduced at paragraph 6 of his affidavit and Mr. Harding did not know. Finally, Mr. Harding admitted that the accounting services are not provided by the Applicant itself.

[186]  Given that the Opponent has met its initial burden, the Applicant had the burden to provide evidence that it first used the Mark in Canada as early as November 30, 1986 in association with each of the Goods and Services. It failed to do so.

[187]  Consequently, this ground of opposition is maintained.

XIII Ground of opposition based on section 12(1)(b) of the Act

[188]  While the legal burden is upon an applicant to show that its trademark is registrable, there is an initial evidential burden upon an opponent in respect of this ground to adduce sufficient admissible evidence which, if believed, would support the truth of its allegations that the applied-for trademark is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant's goods and services or their place of origin [section 12(1)(b) of the Act].

[189]  The test to be applied when assessing whether a trademark violates section 12(1)(b) of the Act has been summarized by the Federal Court of Appeal in Ontario Teachers’ Pension Plan Board v Canada (2012), 2012 FCA 60 (CanLII), 99 CPR (4th) 213 at para 29:

It is trite law that the proper test for a determination of whether a trademark is clearly descriptive is one of first impression in the mind of a normal or reasonable person. […] One should not arrive at a determination of the issue by critically analyzing the words of the trademark, but rather by attempting to ascertain the immediate impression created by the trademark in association with the wares or services with which it is used or proposed to be used. In other words, the trademark must not be considered in isolation, but rather in its full context in conjunction with the wares and services. In determining whether a trademark is clearly descriptive, one must also remember that the word "clearly" found in paragraph 12(1)(b) of the Act is there to convey the idea that it must be self-evident, plain or manifest, that the trademark is descriptive of the wares or services (see: Hughes on Trademarks, 2d ed, loose-leaf (consulted on February 7, 2012), (Markham: LexisNexis, 2005), pp. 629-631 at para. 30; Milan Chromecek and Stuart C. McCormack, World Intellectual Property Guidebook Canada, (New York: Matthew Bender & Co. Inc.1991) at pp. 6-61 to 6-68; see also Drackett Co. of Canada v. American Home Products Corp. (1968), 55 C.P.R. 29 (Can. Ex. Ct.), at pp. 33-34 ("Drackett"); and Molson (FCA) at para. 30). Finally, the word "character" found at paragraph 12(1)(b) has been defined by the case law to mean a feature, trait or characteristic belonging to the wares or services (see Drackett at 34; GWG Ltd. v. Canada (Registrar of Trade Marks) (1981), 55 C.P.R. (2d) 1 (Fed. T.D.), at 6; Assn. of Professional Engineers (Ontario) v. Canada (Registrar of Trade Marks) (1959), 31 C.P.R. 79 (Can. Ex. Ct.), at 88). (My underlined)

[190]  It has been determined that whether a trademark is clearly descriptive of the character or quality of the goods or services is to be assessed from the point of view of the average retailer, consumer or everyday user of the type of goods or services it is associated with [see Drackett Co of Canada Ltd v American Home Products Corp (1968), 55 CPR 29 (Ex Ct) at 34; Wool Bureau of Canada v Canada (Registrar of Trade Marks) (1978), 40 CPR (2d) 25, 1978 CarswellNat 699 (FCTD); Oshawa Group Ltd v Canada (Registrar of Trade Marks) (1980), 46 CPR (2d) 145 (FCTD), A Lassonde Inc v Canada (Registrar of Trade Marks) 2001 FCA 207, and Stephan Cliche v Canada 2012 FC 564 (CanLII)].

[191]  The Mark must not be carefully analyzed but must be considered in its entirety as a matter of immediate impression [Wool Bureau of Canada Ltd v Registrar of Trademarks (1978), 40 CPR (2d) 25 (FCTD) at 27-8; Atlantic Promotions Inc v Registrar of Trademarks (1984), 2 CPR (3d) 183 (FCTD) at 186]. Finally, one must apply common sense in making the determination about descriptiveness [Neptune SA v Canada (Attorney General) 2003 FCT 715 (CanLII)].

[192]  The purpose of the prohibition in section 12(1)(b) of the Act is to prevent any single trader from monopolizing a term that is clearly descriptive or common to the trade, thereby placing legitimate traders at a disadvantage [Canadian Parking Equipment Ltd v Canada (Registrar of Trademarks) (1990), 34 CPR (3d) 154 (FCTD); e-Funds Ltd v Toronto-Dominion Bank (2007), 61 CPR (4th) 475 at para 15 (TMOB)].

[193]  It is important to note that Mr. Harding made it clear that the Mark is not used as a professional designation [see paragraph 18 of his affidavit].

[194]  Given that the Mark is neither a professional designation nor a certification mark, I must determine whether the Mark is clearly descriptive or deceptively misdescriptive of the Goods and Services within the meaning of section 12(1)(b) of the Act by applying the principles outlined above.

[195]  The Opponent points out that “the services contained in the Application include certification of education and training awards meeting defined standards in the field of management accounting; certification of educational and training standards meeting defined standards in the field of management accounting; association services being the certification of services provided by members of an association in the field of accountancy and finance; accreditation of accountants for quality or standards;” (emphasis added by the Opponent).

[196]  The Opponent also argues that Mr. Harding describes the Applicant as “a professional body of management accountants” which was “incorporated under the Royal Charter Byelaws and Regulations granted by Queen Elizabeth the Second in 1975” [see Harding Affidavit at para. 2].

[197]  Consequently, according to the Opponent, the Mark clearly describes that the Goods and Services are provided by a chartered institute comprised of management accountants.

[198]  In its written argument, the Applicant refers to applications or registrations for trademarks that are used with membership or association services or related types of services offered to their membership. Those citations have not been put into evidence in the record. If the Applicant intended to rely on those citations in its written argument or at the hearing, it had to introduce those citations as evidence in the record. I shall ignore them. This is not a situation similar to the one in Canadian Parking Equipment Ltd v Registrar of Trade Marks (1994), 34 CPR (3d) 154 (FCTD). In that case the applicant referred to citations from the register before the examiner at the examination stage of the application. Here, we are at the opposition stage, an adversarial process, where facts must be put into evidence. There is no reference to these citations in the Applicant’s evidence or in its counter statement.

[199]  Under, these circumstances, I am not inclined to exercise my discretionary power to check the register.

[200]  The test I have to apply is the following: would a casual consumer of the Goods and Services in Canada think, at the filing date of the application, on a first impression basis, that the Mark, when associated with them, clearly describes the character or quality of those Goods and Services. I do think so.

[201]  I believe that a Canadian casual consumer of the Goods and Services will think upon first impression of the Mark that the Goods and those association services are provided by a chartered institute comprised of management accountants.

[202]  The Applicant, in its written argument and at the hearing, argued that the Registrar withdrew its objection that the Mark was clearly descriptive. At the examination stage, the Registrar needs to be satisfied that the trademark is not registrable to refuse the application [see section 37 of the Act], while under section 38, in an opposition process, the Registrar must take into consideration all the evidence in the file and the arguments raised by both parties to determine if the trademark applied for is registrable [see Carling Breweries Ltd v Molson Cos 1984 CarswellNat 83 (FCTD)].

[203]  The Applicant argues that if I consider that the Mark is clearly descriptive within the meaning of section 12(1)(b), I should conclude, with the evidence in the file, that the Mark has become distinctive at the filing date of the application within the meaning of section 12(2) of the Act. It has the burden to show that the Mark has acquired a dominant secondary meaning in Canada in relation to the Applicant’s Goods and Services [see Carling, supra]. To claim the benefit of this section, the Applicant is required to provide evidence of both prior use and acquired distinctiveness [see MC Imports Inc v AFOD Ltd, 2016 FCA 60 at para, 76]. That burden on the Applicant is a heavy one [See Carling, supra].

[204]  The information provided by Mr. Harding and Mr. Ratnayake on the use of the Mark in Canada is detailed in sections III.6.ii and III.6.iii above. It falls short of establishing that the Mark has become distinctive throughout Canada as of June 29, 2011 for the reasons detailed hereinafter.

[205]  With respect to Mr. Harding’s affidavit:

• There is no information on the number of Canadians who visited the Applicant’s website per year;

• There is no information on the number of Canadians who attended the conferences identified in his affidavit;

• He refers to events hosted by CIMA-Global. There is no information if those events where held in Canada and if so where and when. Also how many Canadians attended those events?

• As for the publications identified in his affidavit, he does not mentioned how many copies were issued and to how many Canadians they were distributed;

• He mentioned during his cross-examination that some of the Goods were never sold but were given away.

[206]  Mr. Ratnayake provides some numerical information but it fails to prove that the Mark has become distinctive of the Goods and Services in Canada as of June 29, 2011 in that:

• The breakdown of the annual membership in Canada never exceeded 1261 before the material date with over 800 to 885 in Ontario and less than 150 in British Columbia and Alberta and less than 30 in Quebec. Consequently, any reference to distribution of magazines, literature, newsletters to the membership in Canada is of very limited value;

• The annual breakdown of money spent in Canada for actual promotion provided for the period between 1994 and 2010 inclusive varies from over $300 to over $32,000 for a total of approximately $245,0000 during a period of 16 years. There is no breakdown by province;

• There is no information on the number of Canadians who visited the website of CIMA Canada;

• There is no information on the distribution of the promotional material illustrated in Exhibit 17 namely, how many were distributed per item, per province, per year;

• On the promotional events or sponsored events held in Canada, there is no information on the number of attendees; also, they were mainly held in Toronto.

[207]  During her cross-examination, Ms. Harding admitted knowing the Applicant for a long time, without specifying since when. That admission reflects her own personal knowledge and is not representative of the knowledge of the average Canadian consumer. Therefore, this admission falls short of establishing that the Mark was distinctive in Canada at the material date

[208]  Consequently, I conclude that the Applicant has not met its burden to prove, on a balance of probabilities, despite the Mark being clearly descriptive of the character and quality of the Goods and Services, that it has become distinctive through its use in Canada at the filing date of the application so that it was registrable within the meaning of section 12(2) of the Act.

[209]  Therefore, this ground of opposition is maintained.

XIV Ground of Opposition Based on Section 2 (distinctiveness)

[210]  For the purpose of this decision I only need to address the last prong of this ground of opposition which reads as follows:

the alleged mark was and is clearly descriptive or deceptively misdescriptive of the character or quality of the goods and services described in the Application in that it clearly describes or deceptively misdescribes that the goods and services of the Applicant are offered by or related to a chartered institute or an institute incorporated under Royal Charter, which provides goods and services for or on behalf of management accountants, and that the alleged mark has not been so used in Canada by the Applicant as to have become distinctive at the date of filing the Application.

 

[211]  It is successful. It has been held that a trademark found to be clearly descriptive of the character or quality of the goods or services is necessarily non-distinctive and cannot serve to distinguish those goods or services from the goods or services of others [see Canadian Council of Professional Engineers v APA - The Engineered Wood Assn (2000), 7 CPR (4th) 239 (FCTD)].

XV Grounds of Opposition based on Sections 16(1)(a) and 12(1)(d) of the Act

[212]  Given that the Opponent has been successful under three separate grounds of opposition, it is not necessary for me to rule on those grounds of opposition.

XVI Disposition

[213]  Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(12) of the Act.

Jean Carrière

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

Annex A

 

 

Goods

• (1) Computer software for collecting, retrieving, and calculating financial statistics, and creating reports thereof in the field of management accountancy; computer software for collecting, retrieving, and calculating financial statistics, and creating reports thereof, and for providing electronic books, study guides and study courses to assist with examination preparation in the field of management accountancy downloadable from the Internet; USB drives featuring information on accounting management services, auditing services, business management services, and professional association services in the field of management accounting; magnetically encoded cards for accessing buildings; magnetically encoded cards for identification purposes; calculators; downloadable electronic publications in the field of management accountancy; computer application software for receiving, recording, storing, transmitting, and reproducing sound and images relating to management accountancy; MP3s, JPEGs, MPEGs, CDs and DVDs featuring information relating to management accountancy; recordings of sound and images stored in digital or analogue form, namely universal bus flash drives, MP3s, JPEGs, MPEGs, video discs, CDs, mini discs, DVDs, audio tapes and video tapes, featuring information relating to management accountancy; mouse mats; printed matter, namely books, periodicals, journals, magazines and newsletters relating to management accountancy; instructional and teaching materials, namely workbooks and study texts relating to management accountancy; education and training course materials, namely handbooks, manuals and guides relating to management accountancy; printed business reports; printed guidelines; stationery, namely, letterhead, envelopes, business cards, memo pads; writing and drawing instruments; pens, pencils; folders; diaries, calendars and address books. (The Goods)

 

Services

 

• (1) Accounting services; account auditing; business auditing; promoting the business and career interests of certified management accountants through online advertising on applicant's website; business management services; business research services, namely market research services, focus group services, product development services, business surveys; business management consulting services; provision of information regarding third party businesses; business policy review, development and implementation services; business problem identification, analysis and resolution services; business assistance in identifying and prioritizing tasks; employment research services; employment consultancy services; employment information services; career planning services; market research services; compilation of information into computer databases; database management services; association services, namely promoting and supporting the interests of the certified management accountants and providing access to databases containing information relating to management accountancy; financial analysis; financial appraisals; financial forecasting, financial investment counseling; financial analysis consultation services; financial planning; financial management; student loan and credit services; tuition services; insurance services; financial sponsorship of education and training activities and conferences; educational services, namely organizing and conducting classes, workshops, training courses, correspondence courses, lectures, seminars, symposiums, conferences and exhibitions in the field of management accounting; continual professional development tuition services in the field of management accountancy; examination services, namely, conducting examination of students of certified management accounting apprenticeship programs for membership status and professional designation status; organizing, arranging and conducting examinations of students for certification of management accounting credentials; electronic examination processes, namely, conducting examination of students of management accounting apprenticeship programs for membership status of professional designation status; educational assessment services, namely, assessing quality of courses and programs offered for certified management accounting apprenticeship programs; skills assessment services, namely, assessing and testing of skills and qualifications of students enrolled in certified management accounting programs; providing instruction to individuals and organizations in the field of certified management accounting; organisation of educational events, namely, seminars, workshops, symposiums, conferences, trade shows, and career shows in the field of certified management accounting; providing facilities for classes, workshops, seminars, symposiums, conferences, examinations and exhibitions; rental of educational examination rooms; rental of rooms and buildings for educational and training purposes; library services; production and rental of educational audio tape, film, video, MP3s, JPEGs, MPEGs, CDs and DVDs in the field of management accountancy; provision of electronic books, study guides and study courses to assist with examination preparation in the field of management accountancy; electronic publishing services; vocational guidance; certification of education and training awards meeting defined standards in the field of management accounting; certification of educational and training standards meeting defined standards in the field of management accounting; certification of educational examiners and educational examining bodies meeting defined standards in the field of management accounting; accreditation of educational examiners and educational examining bodies meeting defined standards in the field of management accounting; career advisory services; design of syllabuses, examination systems, examinations and tests; event planning; association services being the certification of services provided by members of an association in the field of accountancy and finance; accreditation of accountants for quality or standards; providing quality assurance of qualification in the field of management accountancy; research and study services relating to accountancy and finance; providing quality assurance of certification programs offered by others for certification of management accountants; professional representation and lobbying services in the field of accountancy, certification of individuals meeting prescribed educational standards in the field of management accounting, certifying individual attainment, materials and services meeting prescribed standards in the field of management accounting; professional advisory, information and consultancy services all relating to the research, analysis and development of new and existing organisational and business models, structures, practices and strategies. (The Services)

 

 

Annex B

The grounds of opposition are as follows:

 

(a) Paragraph 38(2)(a)

 

The Application does not conform to the requirements of section 30 in that,

• i) contrary to section 30(i), the Applicant cannot have been satisfied that it was entitled to use the alleged mark in Canada as of the priority filing date in that, contrary to section 34, the priority claim based on UK application no. 2578969 is invalid because as of the filing date of the Application, the application filed in the UK was not made by the same applicant. Specifically, the UK application was filed in the name of "The Chartered Institute of Management Accountants". The subject Application was filed in the name of "Chartered Institute of Management Accountants".

• ii) contrary to section 30(i), the Applicant cannot have been satisfied that, as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and/or at all relevant times, it was entitled to use the alleged mark in Canada because there was and is no legal entity named "Chartered Institute of Management Accountants".

• iii) contrary to section 30(a), at the priority filing date (which is invalid), the date of filing the Application and at all relevant times, the Application does not contain a statement in ordinary commercial terms of the specific services in association with which the alleged mark is alleged to have been used in Canada, in that,

• o the services which include "promoting the business and career interests of certified management accountants through online advertising on applicant's website; provision of information regarding third party businesses; association services, namely promoting and supporting the interests of the certified management accountants" are not real services provided to the public because they are simply to make the public aware of the services provided by authorized persons of the Applicant or the Applicant's members. Alternatively, if these are real services provided to the public, they are not described in ordinary commercial terms because they do not specify the types of information that are provided regarding third party businesses, or the means or manner by which the promotional and support services are provided;

• o the services which include "accounting services; accounting auditing; business auditing; business management services; business management consulting services; provision of information regarding third party businesses; business policy review, development and implementation services; business problem identification, analysis and resolution services; business assistance in identifying and prioritizing tasks; financial analysis; financial appraisals; financial forecasting, financial investment counseling; financial analysis consultation services; financial planning; financial management; research and study services relating to accountancy and finance; professional advisory, information and consultancy services all relating to the research, analysis and development of new and existing organisational and business models, structures, practices and strategies" are services provided by authorized persons of the Applicant or the Applicant's members who have met the standards established by the Applicant, for use of a certification mark and thus, these services should be described in ordinary commercial terms in association with a certification mark, and not an ordinary trade­ mark; and

• o the services which include "association services being the certification of services provided by members of an association in the field of accountancy and finance" are not real services provided to the public by the Applicant because they are simply referring to the nature of the services provided by authorized persons of the Applicant or the Applicant's members, in association with a certification mark, and not to any real services provided by the Applicant, in association with an ordinary trade­ mark.

• iv) Contrary to section 30(b), the Applicant has not used the alleged mark in Canada in association with each of the goods and services described in the Application as of the alleged date of first use.

Alternatively, if the Applicant did sell or perform each of the goods and services described in the Application in Canada as of the alleged date of first use, said sale or performance was not in association with the alleged mark THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS, but was in association with the mark CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS.

Moreover, the Applicant has not used the alleged mark in Canada in association with the services which include "accounting services; accounting auditing; business auditing; business management services; business management consulting services; provision of information regarding third party businesses; business policy review, development and implementation services; business problem identification, analysis and resolution services; business assistance in identifying and prioritizing tasks; financial analysis; financial appraisals; financial forecasting, financial investment counseling; financial analysis consultation services; financial planning; financial management; research and study services relating to accountancy and finance; professional advisory, information and consultancy services all relating to the research, analysis and development of new and existing organisational and business models, structures, practices and strategies" because these services are provided by authorized persons of the Applicant or the Applicant's members in association with a certification mark and are not real services provided by the Applicant in association with an ordinary trade-mark that is the subject of this Application. Furthermore, any use of a certification mark by authorized persons of the Applicant or the Applicant's members in providing these said services was not in association with the alleged mark THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS.

• v) contrary to section 30(f), as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and at all relevant times, the Application does not contain particulars of the defined standard that the use of the alleged mark by authorized persons of the Applicant or the Applicant's members in association with services which include "accounting services; accounting auditing; business auditing; business management services; business management consulting services; provision of information regarding third party businesses; business policy review, development and implementation services; business problem identification, analysis and resolution services; business assistance in identifying and prioritizing tasks; financial analysis; financial appraisals; financial forecasting, financial investment counseling; financial analysis consultation services; financial planning; financial management; research and study services relating to accountancy and finance; professional advisory, information and consultancy services all relating to the research, analysis and development of new and existing organisational and business models, structures, practices and strategies", is intended to indicate, and a statement that the Applicant is not engaged in the performance of services provided by authorized persons of the Applicant or the Applicant's members, in association with which the certification mark is used;

• vi) contrary to section 30(i), the Applicant cannot have been satisfied that, as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and/or at all relevant times, it was entitled to use the alleged mark in Canada in association with the goods and services described in the Application because the Applicant knew, or ought to have known that, as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and/or at all relevant times, the alleged mark for use in association with the goods and services described in the Application, was and is,

• o a prohibited mark contrary to section 9(1)(n)(iii), in that the alleged mark consists of, or so nearly resembles as to be likely to be mistaken for, the Opponent's official marks

CHARTERED ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on April 29, 2009 under No. 916,584;

CHARTERED PUBLIC ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on May 4, 2011 under No. 920,690;

CHARTERED PROFESSIONAL ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on August 24, 2011 under No. 921,244;

CHARTERED PROFESSIONAL ACCOUNTANTS, for which public notice was given under s.9(1)(n)(iii) on October 9, 2013 under No. 922,429; and

CERTIFIED PUBLIC ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on March 30, 2011 under No. 920,688;

• o confusing with the trade-marks CHARTERED ACCOUNTANT; CHARTERED PUBLIC ACCOUNTANT;

CHARTERED PROFESSIONAL ACCOUNTANT; CHARTERED PROFESSIONAL ACCOUNTANTS and

CERTIFIED PUBLIC ACCOUNTANT,

all previously used and/or made known in Canada by the Opponent, the Opponent's predecessor in title, namely, Certified Public Accountants Association of Ontario (the "CPAAO") and/or their licensees in association with goods and services including printed and educational publications in the field of accounting, educational and information services in the field of accounting, certification services in the field of accounting, providing accounting services and promoting and maintaining high standards in the accounting profession, prior to the Applicant's alleged date of first use, the priority filing date (which is invalid) and/or the date of filing the Application;

• confusing with the certification mark CERTIFIED MANAGEMENT ACCOUNTANT, previously used or made known in Canada and previously registered in Canada under registration no. TMA769,859 by Chartered Professional Accountants of Canada or its predecessor in title, The Society of Management Accountants of Canada (collectively referred hereinafter as "CMA Canada"), in association with identifying, measuring, accumulating, analyzing, preparing, interpreting and communicating information used by businesses to plan, evaluate and control appropriate use of resources; and preparing financial reports for shareholders, creditors, regulatory agencies and tax authorities, prior to the Applicant's alleged date of first use, the priority filing date (which is invalid) and/or the date of filing the Application;

• confusing with the trade-mark CERTIFIED MANAGEMENT ACCOUNTANT, previously used or made known in Canada by the Opponent, formerly Certified Management Accountants of Ontario ("CMAO"), also previously known as The Society of Management Accountants of Ontario, and/or by CMA Canada in association with goods and services including printed and educational publications in the field of management accounting, educational and information services in the field of management accounting, establishing and enforcing guidelines in the field of management accounting, providing accounting services, identifying, measuring, accumulating, analyzing, preparing, interpreting and communicating information used by businesses to plan, evaluate and control appropriate use of resources; and preparing financial reports for shareholders, creditors, regulatory agencies and tax authorities, prior to the Applicant's alleged date of first use, the priority filing date (which is invalid) and/or the date of filing the Application;

• clearly descriptive or deceptively misdescriptive of the character or quality of the goods and services described in the Application in that it clearly describes or deceptively misdescribes that the goods and services of the Applicant are offered by or related to a chartered institute or an institute incorporated under Royal Charter, which provides goods and services for or on behalf of management accountants, and that the alleged mark has not been so used in Canada by the Applicant as to have become distinctive at the date of filing the Application;

• a certification mark which cannot be used by the Applicant in the performance of services provided by authorized persons of the Applicant or the Applicant's members, who use the alleged mark as a certification mark to indicate that they or their services have met the standards established by the Applicant; and

• a mark the use of which is prohibited by Ontario's Chartered Accountants Act, 2010, S.O. 2010, c.6 Sch. C and Certified Management Accountants Act, 2010, S.O. 2010, c. 6, Sch. B and/or their predecessor legislation; and by Ontario's Chartered Professional Accountants of Ontario Act, 2017, S.O. 2017, c. 8, Sch. 3.

 

(b) Paragraph 38(2)(b)

 

The alleged mark for use in association with the goods and services described in the Application is not registrable in that,

• contrary to section 12(1)(b), as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and/or at all relevant times, including the date of the Registrar's decision, the alleged mark for use in association with the goods and services described in the Application, was and is clearly descriptive or deceptively misdescriptive of the character or quality of the goods and services described in the Application in that it clearly describes or deceptively misdescribes that the goods and services of the Applicant are offered by or related to a chartered institute or an institute incorporated under Royal Charter, which provides goods and services for or on behalf of management accountants, and that, contrary to section 12(2), the alleged mark has not been so used in Canada by the Applicant as to have become distinctive at the date of filing the Application;

• contrary to section 12(1)(d), as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and/or at all relevant times, including the date of the Registrar's decision, the alleged mark for use in association with the goods and services described in the Application, was and is confusing with the certification mark CERTIFIED MANAGEMENT ACCOUNTANT (TMA769,859), registered by CMA Canada in association with identifying, measuring, accumulating, analyzing, preparing, interpreting and communicating information used by businesses to plan, evaluate and control appropriate use of resources; and preparing financial reports for shareholders, creditors, regulatory agencies and tax authorities; and

• contrary to section 12(1)(e), as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and/or at all relevant times, including the date of the Registrar's decision, it was and is, a mark the adoption of which is prohibited by section 9(1)(n)(lii), in that the alleged mark consists of, or so nearly resembles as to be likely to be mistaken for, the Opponent's official marks

CHARTERED ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on April 29, 2009 under No. 916,584;

CHARTERED PUBLIC ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on May 4, 2011 under No. 920,690;

CHARTERED PROFESSIONAL ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on August 24, 2011 under No. 921,244;

CHARTERED PROFESSIONAL ACCOUNTANTS, for which public notice was given under s.9(1)(n)(iii) on October 9, 2013 under No. 922,429; and

CERTIFIED PUBLIC ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on March 30, 2011 under No. 920,688.

 

 

(c) Paragraph 38(2)(c)

 

The Applicant is not the person entitled to registration of the alleged mark in that, contrary to section 16(1)(a), as of the alleged date of first use, the priority filing date (which is invalid), the date of filing the Application and/or at all relevant times, it was and is confusing with:

• the trade-marks CHARTERED ACCOUNTANT; CHARTERED PUBLIC ACCOUNTANT; CHARTERED PROFESSIONAL ACCOUNTANT; CHARTERED PROFESSIONAL ACCOUNTANTS and CERTIFIED PUBLIC ACCOUNTANT, all previously used and/or made known in Canada by the Opponent, the Opponent's predecessor in title, namely CPAAO, and/or their licensees in association goods and services including printed and educational publications in the field of accounting, educational and information services in the field of accounting, certification services in the field of accounting, providing accounting services and promoting and maintaining high standards in the accounting profession; and

• the trade-mark CERTIFIED MANAGEMENT ACCOUNTANT, previously used and/or made known in Canada by the Opponent, formerly CMAO. also previously known as The Society of Management Accountants of Ontario, and/or by CMA Canada, in association with goods and services including printed and educational publications in the field of management accounting, educational and information services in the field of management accounting, establishing and enforcing guidelines in the field of management accounting, providing accounting services, identifying, measuring, accumulating, analyzing, preparing, interpreting and communicating information used by businesses to plan, evaluate and control appropriate use of resources; and preparing financial reports for shareholders, creditors, regulatory agencies and tax authorities.

 

The Opponent, the Opponent's predecessor in title, namely CPAAO, the Opponent, formerly CMAO, and/or CMA Canada have not abandoned their rights to the trade­ marks CHARTERED ACCOUNTANT; CHARTERED PUBLIC ACCOUNTANT; CHARTERED PROFESSIONAL ACCOUNTANT; CHARTERED PROFESSIONAL ACCOUNTANTS; CERTIFIED PUBLIC ACCOUNTANT and CERTIFIED MANAGEMENT ACCOUNTANT in Canada.

 

(d) Paragraph 38(2)(d)

 

The alleged mark is not distinctive of the Applicant in that, as of the alleged date of fi use, the priority filing date (which is invalid), the date of filing the Application and/or relevant times, including the date of the opposition,

• the alleged mark consists of, or so nearly resembles as to be likely to be mistaken for, the Opponent's official marks

CHARTERED ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on April 29, 2009 under No. 916,584;

CHARTERED PUBLIC ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on May 4, 2011 under No. 920,690;

CHARTERED PROFESSIONAL ACCOUNTANT t for which public notice was given under s.9(1)(n)(iii) on August 24, 2011 under No. 921,244; CHARTERED PROFESSIONAL ACCOUNTANTS, for which public notice was given under s.9(1)(n)(iii) on October 9, 2013 under No. 922,429; and CERTIFIED PUBLIC ACCOUNTANT, for which public notice was given under s.9(1)(n)(iii) on March 30, 2011 under No. 920,688,

• the alleged mark does not distinguish nor is it adapted to distinguish the goods and services of the Applicant from the goods and services of the Opponent and/or the Opponent's predecessor in title, namely CPAAO, including printed and educational publications in the field of accounting, educational and information services in the field of accounting, certification services in the field of accounting, providing accounting services and promoting and maintaining high standards in the accounting profession, sold, performed and/or advertised in Canada by the Opponent, the Opponent's predecessor in title, namely CPAAO, and/or their licensees, in association with the trade-marks CHARTERED ACCOUNTANT; CHARTERED PUBLIC ACCOUNTANT; CHARTERED PROFESSIONAL ACCOUNTANT; CHARTERED PROFESSIONAL ACCOUNTANTS and/or CERTIFIED PUBLIC ACCOUNTANT, which were all previously used and/or made known in Canada,

• the alleged mark does not distinguish nor is it adapted to distinguish the goods and services of the Applicant from the goods and services of the Opponent, formerly CMAO, also previously known as The Society of Management Accountants of Ontario, and/or CMA Canada including printed and educational publications in the field of management accounting, educational and information services in the field of management accounting, establishing and enforcing guidelines in the field of management accounting, providing accounting services, identifying, measuring, accumulating, analyzing, preparing, interpreting and communicating information used by businesses to plan, evaluate and control appropriate use of resources; and preparing financial reports for shareholders, creditors, regulatory agencies and tax authorities, sold, performed and/or advertised in Canada by the Opponent, formerly CMAO, also previously known as The Society of Management Accountants of Ontario, and/or by CMA Canada in association with the trade-mark CERTIFIED MANAGEMENT ACCOUNTANT, which was previously used and/or made known in Canada;

• the alleged mark does not distinguish nor is it adapted to distinguish the goods and services of the Applicant from the services of CMA Canada, for identifying, measuring, accumulating, analyzing, preparing, interpreting and communicating information used by businesses to plan, evaluate and control appropriate use of resources; and preparing financial reports for shareholders, creditors, regulatory agencies and tax authorities, in association with the certification mark CERTIFIED MANAGEMENT ACCOUNTANT, which was previously registered and used and/or made known in Canada.

• the alleged mark was and is clearly descriptive or deceptively misdescriptive of the character or quality of the goods and services described in the Application in that it clearly describes or deceptively misdescribes that the goods and services of the Applicant are offered by or related to a chartered institute or an institute incorporated under Royal Charter, which provides goods and services for or on behalf of management accountants, and that the alleged mark has not been so used in Canada by the Applicant as to have become distinctive at the date of filing the Application.

 

Annex C

 

 

Application Number	Trademark	Applicant	Opponent	Grounds of opposition
1533727	THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS	CIMA	ICAO	2, 12(1)(b), 12(1)(d), 12(1)(e), 16(1)(a), 30(a), 30(b), 30(f) and 30(i)
1533727	THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS	CIMA	CMAO	2, 12(1)(b), 12(1)(d), 12(1)(e), 16(1)(a), 30(a), 30(b), 30(f) and 30(i)
1533728	CIMA & Design	CIMA	CPAO	2, 12(1)(b), 12(1)(d), 16(1)(a), 30(a), 30(b), 30(f) and 30(i)
1533729	CIMA	CIMA	CPAO	2, 12(1)(b), 12(1)(d), 16(1)(a), 30(a), 30(b), 30(f) and 30(i)
1531402	CIMA STRATEGIC SCORECARD	CIMA	CPAO	2, 12(1)(d), 16(1)(a), 30(b), 30(f) and 30(i)

 

Annex D

 

 

certification mark means a mark that is used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard with respect to

• (a) the character or quality of the goods or services,

• (b) the working conditions under which the goods have been produced or the services performed,

• (c) the class of persons by whom the goods have been produced or the services performed, or

• (d) the area within which the goods have been produced or the services performed,

from goods or services that are not of that defined standard; 

trademark means

• (a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,

• (b) a certification mark,

• (c) a distinguishing guise, or

• (d) a proposed trademark;

•  

trade-name means the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual; (nom commercial)

• 9 (1) No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,

• o (…)

• o (n) any badge, crest, emblem or mark

• § (…)

• § (iii) adopted and used by any public authority, in Canada as an official mark for goods or services,

in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;

• 23 (1) A certification mark may be adopted and registered only by a person who is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used.

(2) The owner of a certification mark may license others to use the mark in association with goods or services that meet the defined standard, and the use of the mark accordingly shall be deemed to be use thereof by the owner.

(3) The owner of a registered certification mark may prevent its use by unlicensed persons or in association with any goods or services in respect of which the mark is registered but to which the licence does not extend.

(4) Where the owner of a registered certification mark is an unincorporated body, any action or proceeding to prevent unauthorized use of the mark may be brought by any member of that body on behalf of himself and all other members thereof.

 

 

 

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

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HEARING DATE 2019-02-11 and 12

APPEARANCES

Mr. Gervas W. Wall	FOR THE OPPONENT
Mr. Henry Lue and Mr. Thomas Kurys	FOR THE APPLICANT

AGENT(S) OF RECORD

Deeth Williams Wall	FOR THE OPPONENT
Wilson Lue	FOR THE APPLICANT