College of Dietitians of Alberta v. 3393291 Canada Inc. (Canadian School of Natural Nutrition)

College of Dietitians of Alberta v. 3393291 Canada Inc. (Canadian School of Natural Nutrition)
Court (s) Database
Federal Court Decisions
Date
2015-04-14
Neutral citation
2015 FC 449
File numbers
T-394-14
Decision Content
Date: 20150414
Docket: T-394-14
Citation: 2015 FC 449
Ottawa, Ontario, April 14, 2015
PRESENT: The Honourable Mr. Justice Zinn
BETWEEN:
COLLEGE OF DIETITIANS OF ALBERTA
Applicant
and
3393291 CANADA INC. CARRYING ON
BUSINESS AS CANADIAN SCHOOL
OF NATURAL NUTRITION
Respondent
ORDER AND REASONS
Introduction [1] The College of Dieticians of Alberta [the College] applies pursuant to subsection 57(1) of the Trade-marks Act, RSC 1985, c T-13 [the TMA] for an order expunging five certification marks and two commercial marks held by the Canadian School of Natural Nutrition [CSNN].
[2] The College is a professional regulatory body, created in 2002 under Alberta’s Health Professions Act, RSA 200, cH-7 [the HPA]. Its aim is to regulate the practice of dietetics by establishing education standards and ensuring the competency of its members.
[3] CSNN is a private vocational school, founded in 1995 in Ontario, with 14 branches across Canada, all operated by franchisees and licensees pursuant to written agreements. Over 5,500 students have graduated from the school since its establishment.
[4] The certification marks [the Marks] at issue are the following:
• R.H.N. (TMA791,677)
• R. H. N. Registered Holistic Nutritionist (TMA791,676)
• R.H.N. Holistic Nutritionist (TMA802,045)
• R.H.N. Holistic Nutritional Consultant (TMA791,675)
• R.H.N. Registered Holistic Nutritional Consultant (TMA791,679)
[5] These Marks are registered in association with the following services:
Nutrition and preventative health care services incorporating a body-mind-spirit or holistic approach, namely evaluating a client’s nutritional needs, providing an individualized plan which includes recommendations for particular whole foods, lifestyle and supplements along with an individualized meal plan, shopping tips and recipe ideas.
[6] They were registered subject to the following provisos:
(a) The certification marks shall be used only in association with services that confirm to standards of performance established by the applicant. (b) The standards of performance are as follows: completion of the educational program offered by the Canadian School of Natural Nutrition (CSNN) in the field of nutrition and preventive health care, and the body-mind-spirit or holistic approach of heath and nutrition counselling. (c) The applicant shall have the right to inspect the performance of the said services in order to ensure that the standards of performance are being maintained by the licensees in accordance with those taught through the educational program.
[7] The two commercial marks at issue are the following:
• R.H.N. & Design (TMA520,208)
• R. H. N. (TMA520,209)
CSNN has agreed to the issuance of an Order expunging the two commercial marks.
Issues [8] The fundamental issue is whether all or any of the Marks are validly registered or whether they ought to be expunged. This raises the following questions:
1. Are the Marks clearly descriptive or deceptively misdescriptive contrary to paragraph 12(1)(b) of the TMA such that their registrations are invalid pursuant to paragraph 18(1)(a)?
2. Are the Marks likely to lead to the belief that their associated services have received governmental approval or authority contrary to paragraph 9(1)(d) of the TMA such that they are not registrable under paragraph 12(1)(e), making their registrations invalid pursuant to paragraph 18(1)(a)?
3. Are the Marks lacking distinctiveness, making their registrations invalid pursuant to paragraph 18(1)(b) of the TMA?
4. Should the court expunge the mark “R.H.N. Registered Holistic Nutritional Consultant” because:
a. It had been abandoned, making its registration invalid pursuant to paragraph 18(1)(c) of the TMA; or
b. CSNN misstated its first use contrary to subsection 16(1) of the TMA, such that CSNN is not the person entitled to secure the registration, and rendering the registration invalid pursuant to paragraph18(1)(d)?
5. Did CSNN misstate its entitlement to use the Marks at the time of registration contrary to subsection 30(i) of the TMA because the Marks violate paragraph 9(1)(d), making the Marks’ registrations invalid pursuant to paragraph 18(1)(d)?
[9] The relevant statutory provisions are reproduced in the attached Appendix.
Analysis A. Descriptiveness [10] The College submits that the Marks of CSNN are clearly descriptive or deceptively misdescriptive contrary to paragraph 12(1)(b) of the TMA because they are professional designations, or are clearly descriptive overall, or are deceptively misdescriptive. It submits that the Marks have not acquired distinctiveness.
(1) Professional Designations [11] The College points to CSNN’s use of the Marks as professional designations, which, it maintains, indicates descriptiveness. The College points to numerous examples in CSNN’s classroom brochures, student handbooks, online advertisements and graduates’ promotional materials where it found explicit and implicit references to the Marks as a professional designation. The College also notes the dictionary definitions for each of the words making up the Marks – i.e., “registered”, “holistic”, “nutritional”, “nutritionist”, and “consultant” – which, in using terms such as “professional” and “specialist”, it says further demonstrate that these Marks are professional designations.
[12] The College points to jurisprudence from both the Federal Court and the Trade-Mark Opposition Board, on which it relies in support of the proposition that the simple use of certification marks as professional designations will make the marks clearly descriptive of the wares or services associated with the practice of that profession: Life Underwriters Ass of Canada v Provincial Ass of Québec Life Underwriters, [1989] 1 FC 570, rev’d on other grounds (1990) 3 FC 500 (FCA), rev’d on other grounds [1992] 1 SCR 440 [Life Underwriters]; Canadian Institute of Bookkeeping Incorporated v Institute of Professional Bookkeepers of Canada, 2012 TMOB 181; Canadian Council of Professional Engineers v Lubrication Engineers, Inc, [1992] 2 FC 329 (FCA) [Lubrication Engineers]; Association of Professional Engineers of the Province of Ontario v Canada (Registrar of Trade Marks), [1959] Ex C R 354 [Professional Engineers]; Canadian Council of Professional Engineers v John Brooks Co (2001), 21 CPR (4th) 397 (TMOB); Canadian Council of Professional Engineers v John Brooks Co, 2004 FC 586; Canadian Council of Professional Engineers v Management Engineers GmbH (2004), 37 CPR (4th) 277 (TMOB) [Management Engineers]; College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v Council of Natural Medicine College of Canada, 2009 FC 1110 [Chinese Medicine]. In short, the College submits that since the Marks of CSNN are used as professional designations, they are necessarily clearly descriptive, contrary to paragraph 12(1)(b) of the TMA.
[13] As further support for its proposition, the College points to a 2010 Canadian Intellectual Property Office practice notice indicating that if research discloses that a mark or portion of a mark consists of a professional designation, then trade-mark examiners should find a violation of paragraph 12(1)(b) if a consumer would immediately, as a matter of first impression, conclude that the wares or services are produced by a professional from the designation. It also states, referencing Chinese Medicine at para 53, that the mere addition of an abbreviation, acronym or initials of the professional designation to the mark will not render it registrable.
[14] The College did not address in its written submission, the court’s recent decision in Canadian Dental Ass/L’Assoc Dentaire Canadienne v Ontario Dental Assistants Ass, 2013 FC 266, aff’d 2013 FCA 279 [CDA] where, at para 23, Justice Manson stated that nothing in the TMA or the case law “limits the ability of a professional designation to validly act, in use, as a certification mark.”
[15] In oral submissions, the College accepted that professional designations might not be clearly descriptive per se, it submits that such marks will still violate paragraph 12(1)(b) of the TMA when used to indicate that those providing associated services are members of a professional designation rather than used to distinguish these services from those of other traders: CDA at para 30. In other words, it submits that the mark must characterize the services – i.e., act as an adjective – rather then describe the person – i.e., act as a noun.
[16] The College submits that the Marks are used only to designate the status of graduates as registered holistic nutritionists rather than qualifying the services that they provide – that is, they do not act as adjectives, but as nouns. As such, it submits that the Marks, as professional designations, are still clearly descriptive contrary to paragraph 12(1)(b) of the TMA and, following CDA, ought to be expunged.
[17] I agree with CSNN that following Justice Manson’s decision in CDA, it is clear that the use of a mark as a professional designation does not automatically make that mark clearly descriptive contrary to paragraph 12(b) of the TMA. While past jurisprudence may have implied otherwise, Justice Manson’s statement at para 23, is conclusive of the issue:
To the extent the case of Life Underwriters Assn of Canada v Provincial Assn of Quebec Life Underwriters, [1988] FCJ 564, and cases before the Opposition Board following that decision are relied upon to suggest that a professional designation can never serve to be a valid certification mark, I disagree. Nothing in the Act so limits the ability of a professional designation to validly act, in use, as a certification mark, provided such a designation meets the necessary criteria outlined above with respect to lack of clear descriptiveness, distinctiveness, absence of a likelihood of confusion, and proper use.
[18] In my view, CSNN’s Marks are not clearly descriptive of the services of the professional designation because it does not seem on the record that the Marks are used as professional designations. “R.H.N. Registered Holistic Nutritionist,” etc. – do not actually refer to established professional titles. Indeed, though the parties concede that there exist nutritional consultants who are not graduates of the CSNN, neither provided any evidence that anyone other than graduates use these exact designations or others that look like it (with the one exception of one non-graduate who the CSNN challenged). It would seem that the CSNN is attempting, through the use of these Marks, to bring about a known professional group.
[19] In using the Marks, the CSNN is not describing services that are generic to an existing profession since there is no such existing profession as described by the Marks. The Marks therefore do not contravene paragraph 12(1)(b) in this sense.
[20] However, in using the Marks as professional designations, the College submits that CSNN nevertheless runs into other problems because the Marks seem to pertain to or describe individual graduates rather than the services they provide. As noted by the College, the Marks are often used in the form of a noun – an R.H.N. – rather than an adjective or descriptor – an R.H.N.’s services. Moreover, although the CSNN highlights promotional materials by the graduates where they place one of the Marks after their names and then explain the services they provide, I am not convinced that the explanations qualify the Marks. Rather, it seems, with a few minor exceptions, that the Marks are used to describe the graduates and the subsequent statements regarding the services performed are separate and do not relate back to the Marks. The specific example cited by the CSNN of Shari Anticknap’s LinkedIn profile demonstrates this. In one paragraph it indicates that she “hold[s] an RHN (Holistic Nutritionist) designation” and then, in a separate paragraph, it explains the services offered. Similarly, on graduates’ profiles on CSNN’s own site, the graduates place “R.H.N.” mark directly after their names and, in lower paragraphs, describe the various services they perform. In all these cases, it is clear, from a visual standpoint, that the Marks are associated with the person rather than what he or she does. It is comparable, as mentioned by the court during oral submissions, to an academic who might, on promotional sites, indicate “M.A., University of Toronto” after his or her name and then describe his or her specialties. In those cases too, the designation would describe the individual rather than qualify the subsequent description of specialties such that it would distinguish them from specialities associated with other designations– e.g., “M.A., McGill University” or “M.A. University of Calgary.” As such, in this case, much like in CDA itself, though the Marks are not in and of themselves problematic for being used as professional designations, their use to identify individuals as being part of a profession, rather than distinguishing the services associated with the Marks, causes difficulty.
[21] This issue, despite arising in relation to paragraph 12(1)(b) of the TMA in the parties’ submissions, in my view, pertains to distinctiveness rather than descriptiveness. The issue is whether the Marks, in qualifying individuals instead of characterizing the services performed in association with the Marks, fail to distinguish these services from those performed by others. This has nothing to do with descriptiveness; however, it may go to distinctiveness.
(2) Marks as Clearly Descriptive Overall [22] Apart from the issue of professional designations, the College submits that the Marks are also clearly descriptive overall.
[23] First, the College submits that the various component words of the Marks – “registered”, “holistic”, “nutritionist”, etc. – are all descriptive and that this can be seen from dictionary definitions, which show that these are ordinary, well-known English words, with descriptive meanings. It notes that while these definitions come from dictionaries published several years after the material dates, they are still reliable, given that these words are not new words, but long-standing ones with established meanings unlikely to have changed.
[24] Additionally, the College argues that the placement of the acronym “R.H.N.” next to these words does not alter the words’ clear descriptiveness because these descriptive phrases dominate the Marks: College of Traditional Medicine, at paras 218-221. Furthermore, it says that the acronym “R.H.N.” is itself descriptive. The College points to the website AcronymFinder.com, which indicates that “R.H.N.” stands for “Registered Holistic Nutritionist” which implies that this term has a known, descriptive meaning. In any event, the College submits that, where juxtaposed with “registered”, “holistic” and “nutritionist”, the meaning of “R.H.N.” becomes obvious, clearly standing for the words placed next to it. Since these words are descriptive, “R.H.N.” becomes descriptive too. Where “registered” is not used – e.g., in the case of “R.H.N. Holistic Nutritionist”– the College argues that it is still plain that “R” stands for this term. As explained by its affiant, Mr. Cook, consumers – i.e., adults inclined to pay a consultant for holistic nutritional counselling – will know, due to the proximity between “H” and “N” to “holistic” and “nutritionist”, that “R.H.N.” is an acronym and that, as such, “R” equally represents a word, which, in the health services context, will be “registered.” Even if this is not the case, and the court accepts only that “H” and “N” are descriptive, the College submits that the Marks will remain clearly descriptive since adding a non-descriptive element will not distract from the clearly descriptive remainder of a mark: Canadian Council of Professional Engineers v Oyj, [2008] TMOB No 110.
[25] Regarding the use of the TM symbol alongside the Marks, the College submits that this will not change the descriptive quality of the words. In any event, it says that there is no evidence that consumers see these symbols or understand their meaning, or that they are used consistently.
[26] The CSNN submits that the College has failed to prove that the individual words making up the text of the Marks and represented in “R.H.N.” – that is, “registered”, “holistic”, “nutrition”, “nutritional” and “consultant” – are clearly descriptive. The dictionary evidence provided is too late, consisting of printouts from current dictionaries rather than those available at the material dates – i.e., 2009 and 2010. In any event, it says that there is no evidence of definitions for the Marks as a whole, which is the proper focus. Moreover, there is nothing from actual consumers demonstrating their impressions of the Marks. The CSNN submits that Mr. Cook’s evidence must be discounted. He is a member of the public, but importantly, he is the Executive Director and Registrar for the College, and thus unusually familiar with the terms. His opinions are therefore not reflective of actual public perception. There is also no evidence of any other use of these same terms, in their order, by competitors, suggesting that the Marks are not clearly descriptive: Fiesta Barbeques Ltd. v General Housewares Corp, 2003 FC 1021, 239 FTR 99 [Fiesta] at paras 17-18. Finally, the CSNN says that the TM symbol frequently accompanies the Marks and their constituent words, alerting the consumer that these terms are proprietary rather than ordinary descriptors and there is no reason to believe that the public does not see or understand this symbol.
[27] With respect to “R.H.N.” on its own, the CSNN submits that the College has not shown that it is clearly descriptive either. It says that the College’s AcronymFinder.com evidence is unreliable and has little probative value; there is nothing indicating who runs the site, whether it represents the Canadian landscape, on what basis certain acronyms are listed or how the College went about searching for “R.H.N.” The CSNN submits that the court should infer from the very inclusion of this evidence that the College was unable to find an entry for “R.H.N.” in any traditional dictionary, meaning that it is not, in fact, part of the common lexicon or descriptive. This case, it says, is therefore distinguishable from Chinese Medicine where the court found historical and third party evidence that the acronym and longer form of the marks in had been used interchangeably such that everyday users of these services were familiar with these terms and the meaning of the acronym. The absence of any third party use of the Mark “R.H.N.” would indicate that it is not descriptive: Fiesta at paras 27-28. Moreover, the CSNN disputes any suggestion that the consumer would, upon simply seeing “R.H.N.” on its own, conclude that it stands for “Registered Holistic Nutritionist.” Such a leap, it submits, would require, firstly, determining that the letters were an acronym and, secondly, guessing what words underlie this acronym. This involves significant “mental gymnastics” contrary to the approach set out in GWG. In fact, the CSNN disagrees that the public would even perceive “R” as representing “registered,” with the College having provided no evidence, other than the atypical opinion of Mr. Cook, that this is the case.
[28] Finally, the CSNN submits that the Marks that include both “R.H.N.” and other words are also not clearly descriptive. “R.H.N.” itself is not descriptive and, the CSNN submits, it will not become so by its placement next to words. Indeed, following the “decoding” process proposed by the College, the consumer would still need to determine that “R.H.N.” is an acronym and decipher what its underlying words are, again requiring mental gymnastics, particularly where “registered” is not present and/or the words forming the balance of the Mark do not correspond directly with “R.H.N.” As above, the CSNN disputes that the consumer would, regardless, have known that “R” meant “Registered.” Thus, even if the component words are found to be clearly descriptive, the CSNN submits that the “R.H.N.” at front is not, therefore making the whole of the Mark not clearly descriptive since the first word or syllable in a mark will always be perceived on first impression as the dominant component of the mark and most important in the minds of the public: Conde Nast Publications Inc v Union des editions modernes (1979), 46 CPR (2nd) 183 (FCTD) [Conde Nast] at p 188.
[29] Although the Marks may not be clearly descriptive as professional designations, three of them – “R. H. N. Registered Holistic Nutritionist,” “R.H.N. Holistic Nutritionist” and “R.H.N. Registered Holistic Nutritional Consultant” – are, in my view, clearly descriptive overall. Indeed, while, as discussed above, these Marks do not simply refer to services generically performed by an established professional, for the reasons that follow, I find that they still make it immediately plain to consumers what their associated services entail, failing in any way to distinguish these services as coming from the CSNN. As such, these Marks violate paragraph 12(1)(b) of the TMA and their registrations are invalid under paragraph 18(1)(a).
[30] In examining facts relating to paragraph12(1)(b), I agree with the parties that the material date is the date of registration – in this case, 2009 and 2010 – and that the relevant perspective for determining whether a mark is clearly descriptive is that of an everyday user of the services: See Fiesta at para 26; Chinese Medicine at para 212. I agree with the CSNN that in order to violate paragraph 12(1)(b), the mark must be clearly descriptive, not somewhat descriptive or suggestive, and that the mark must not be dissected into its component parts but rather considered in its entirety, as a matter of first impression and imperfect recollection, without resorting to mental gymnastics: Chinese Medicine at para 212; Home Juice at p 76; GWG at pp 6-7.
[31] In this case, I find that many of the Marks meet this test. Looking first at the textual parts included in most of the Marks, not only are each of the words clearly descriptive – i.e., “registered,” “holistic,” “nutritional,” “nutritionist” and “consultant” – but, most importantly, when put together into various orders – i.e., “Registered Holistic Nutritionist,”, “Holistic Nutritionist,” “Registered Holistic Nutritional Consultant” and “Holistic Nutritional Consultant” – it is quite obvious what is meant and that is because they are descriptive. The dictionary evidence provided by the College, although current, is likely the same as that which existed five or six years ago, and it demonstrates the known, descriptive meanings of these words. When seen next to each other, the words compliment each other and it is “easy to understand, self-evidence or plain” what services they are associated with, requiring no mental gymnastics: GWG at p 2.
[32] As noted, it is necessary to consider the Marks as a whole. Each Mark incorporates “R.H.N.” While this inclusion will not change the clear descriptiveness of three of the four Marks, which include both “R.H.N.” and text – i.e., “R.H.N. Registered Holistic Nutritionist”, “R.H.N. Registered Holistic Nutritional Consultant” and “R.H.N. Holistic Nutritionist” – it will have an effect on the fourth one – i.e., “R.H.N. Holistic Nutritional Consultant.”
[33] In the first three Marks, I find that “R.H.N.”, when found next to the balance of the Marks, is easily understood and, when read altogether, on first impression, the Marks will be clearly descriptive. This is so despite the fact that “R.H.N.”, on its own, is not descriptive. Indeed, while the College provides printouts from AcronymFinder.com ostensibly demonstrating that “R.H.N.” is known to mean “Registered Holistic Nutritionist,” I agree with the CSNN that this evidence is unreliable, there being no indication of how definitions are included on the site, or whether it reflects the Canadian context
[34] For “R.H.N. Registered Holistic Nutritionist” and “R.H.N. Registered Holistic Nutritional Consultant”, I agree with the College that the inclusion of words with first letters directly corresponding with “R.H.N.”, placed adjacent to it makes it immediately apparent, without any need for mental gymnastics, that “R.H.N.” is an acronym that represents these words next to it. Since these words are themselves clearly descriptive, so too will be the whole.
[35] For “R.H.N. Holistic Nutritionist”, where “R.H.N.” and the words forming the rest of the Mark do not line up perfectly, I nevertheless find that no complex decoding is necessary on the part of the consumer to determine the meaning of the first part of the Mark. Like the College, I find that the evidence demonstrates that, in the context of health services, consumers will understand “R” to mean “registered.” Although Mr. Cook is the Executive Director and Registrar of the College, and therefore perhaps better acquainted with the health care environment, I find that he is still sufficiently a member of the public such that his evidence on this point is convincing. Moreover, while it is not clear from the evidence how many consumers are directly familiar with the HPA or the College, I find that this is largely irrelevant. It is not so much knowledge of this precise legislation or of specific regulatory bodies that leads consumers to associate “R” with “registered” but, rather, the fact that such legislation and regulatory bodies exist, contributing to an environment where consumers are regularly in contact with many different professional titles that use “R” to mean “registered” – e.g. “R.N.” for “registered nurse”, “R.P.N.” for “registered practical nurse” or “registered psychiatric nurse”, “R.Ph.” for “registered pharmacist” etc. As such, in this specific case, I find that, when reading “R.H.N. Holistic Nutritionist”, the consumer will know immediately that “R” means registered and that the balance of the Mark – that is, “H.N.” and “Holistic Nutritionist” – correspond, making the whole descriptive.
[36] All three of these above Marks are similar in this respect to the marks in Chinese Medicine, where Justice O’Keefe found, at para 218, that “the acronyms are not distinguishable because of the type of descriptive phrase dominating the mark.” This is so, despite the fact that graduates use these Marks along with the TM symbol. While I agree with the CSNN that this symbol may show that terms are proprietary rather than descriptive, I find that this would be the case only if TM was used consistently or was integrated into the Mark itself. This, however, is not the case here.
[37] In the case of the fourth Mark which incorporates both “R.H.N.” and text – “R.H.N. Holistic Nutritional Consultant” – I find that the combination of the acronym at front and the specific words make it so that the Mark, when read as a whole, is not clearly descriptive. While the consumer would know immediately, because of the health services context, that the “R” in “R.H.N.” stands for “registered,” the fact that the remaining letters of the acronym – i.e., “H.N.” – do not correspond to the remaining words – “Holistic Nutritional Consultant” – would prevent the consumer from fully and easily deciphering the acronym. It would no longer be instantly plain that these letters stand for anything at all. Indeed, at best, the Mark is suggestive.
[38] I disagree with the College that the Mark would still be descriptive because of the descriptive character of the balance of the Mark – i.e., the text “Holistic Nutritional Consultant.” The Mark must be read as a whole and, to the extent that the court can view some parts of the Mark as being more important than others, it would be “R.H.N.” since, according to jurisprudence, it is the first portion of a mark that is generally considered to create the strongest impression: Conde Nast at p 188; Pernod Ricard v Molson Breweries (1992), 44 CPR (3d) 359 (FCTD) at 370; Molson Companies Ltd v John Labatt Ltd (1990), 28 CPR (3d) 457 at p 461 (FCTD)). Since “R.H.N.” in this case is clearly not descriptive, the rest of the Mark is not either.
[39] Finally, “R.H.N.” on its own is also not clearly descriptive. As discussed above, “R.H.N.” has no independent meaning. Moreover, it cannot be easily decoded when unaccompanied by other words. As above, I find that the consumer, in a health services context, would know that the “R” stood for “registered”, but there is no evidence that he or she would be able to identify the significance of the remaining letters. This Mark therefore does not violate paragraph 12(1)(b) of the TMA.
(3) Marks as Deceptively Misdescriptive [40] In addition to being descriptive, the College submits that the Marks are also deceptively misdescriptive, contrary to paragraph 12(1)(b) of the TMA.
[41] First, the College submits that the Marks are likely to lead to the inaccurate belief that the associated services are performed under governmental approval or authority. As explained by Mr. Cook, many of the Marks use the term “nutritionist,” which is near identical to the term “registered nutritionist” regulated by the College – a governmental body – under the HPA. Moreover, many of the Marks explicitly use the term “registered”, which the public associates with regulated professional titles and is governmentally controlled in Alberta pursuant to the HPA. As discussed above, this is also true of the “R” in “R.H.N.”, which appears in all the Marks, since it stands for “registered.” Additionally, “R.H.N.” is very similar to “R.N.” for “registered nurse”, “R.P.N.” for “registered psychiatric nurse” and “R.D.” for “registered dietician” – all acronyms, which are governmentally regulated under the HPA and with which the public is familiar. Some of these professions, such as registered nurses, in fact deal with nutrition. The consumer might therefore believe that “R.H.N.” is related, also being regulated by the government.
[42] The College submits that confusion has in fact occurred as a result of this deceptive misdescriptiveness. The College, which regulates health professionals involved in diet, has received enquiries regarding 47 individuals using the Marks by people asking whether they were actually registered with the College. A list of these enquiries is attached to Ms. Omerzu’s affidavit.
[43] Second, the College submits that if the Marks do not in fact mislead consumers into believing that the services with which they are associated are subject to governmental approval, they are nevertheless still deceptively misdescriptive because of their use of the term “registered” – or “R” meaning “registered.” It points to the dictionary definition for this word, the verb “register” means “enter or record on an official list or directory.” It further notes that there is no evidence in this case that the graduates are in any way “registered.” Accordingly, it submits, this word, which appears in all the Marks (either in full or as “R”) is inherently misleading.
[44] The CSNN submits that the Marks are not deceptively misdescriptive. It submits that the College has failed to provide sufficient evidence demonstrating that the Marks mislead consumers to believe that their associated services are subject to government approval or authority.
[45] It says that overall, the evidence tendered consists solely of the opinion of Mr. Cook, who, as previously noted, is the Executive Director and Registrar of the College and, in so being, has great familiarity with regulated terms and the health services context, making his opinion atypical. As such, it says that there is no actual evidence that the public will confuse the Marks with “registered nutritionist.” There is also no evidence that the public is aware of the HPA, the College, their roles or other governmentally regulated professional titles using “registered” such that the Marks’ use of “registered” would mislead consumers to believe they are under governmental authority. That such confusion might take place where the Marks do not even contain the actual word “registered” is still less clear given that, as noted above, there is no evidence that the general public perceives the letter “R” as necessarily standing for “registered.” In any event, the CSNN submits that the use of the word “holistic” in the Marks attenuates any impression that “registered” (or “R” meaning “registered”) suggests government supervision, since this word implies a non-traditional health services context, not associated with governmental regulation. Moreover, as testified to by its affiant Ms. O’Leary, nutritional counselling or consulting is an unregulated profession in most parts of the world, including Canada. As for the issues related to “R.N.” for “registered nurse”, “R.P.N.” for “registered psychiatric nurse” and “R.D.” for “registered dietician”, the CSNN disputes that the College has provided any evidence, other than the unfounded speculations of Mr. Cook, that these professionals perform nutritional counselling, that the public is familiar with this fact or with these terms more generally, or that, on this basis, the public might confuse the Marks with these terms, believing that the Marks are subject to government approval.
[46] Moreover, the CSNN disputes that the College has provided any valid examples of confusion of any kind by the public. The enquiries noted in Ms. Omerzu’s affidavit were made by insurance companies, not by the public. Moreover, any evidence regarding the nature or content of these enquiries constitutes hearsay since the list provided by Ms. Omerzu includes no such information. Had there in fact been so many instances of confusion, the CSNN submits that the College would have pursued the graduates under section 129 of the HPA, which sets out fines for contravening section 128. However, there is no evidence of any such proceedings.
[47] Finally, with respect to the College’s allegations that the Marks are generally deceptively misdescriptive because of the use of “registered”, the CSNN submits that the College has again failed to provide sufficient evidence. As above, the CSNN argues that the dictionary definitions for “registered” provided by the College are of time. Moreover, it says that there is no evidence that where “registered” is absent, the public will understand “R” to mean “registered” and where it is present that it would be misleading to imply that the graduates are registered with the CSNN and its branches.
[48] I agree with the College and find that all of the Marks violate paragraph 12(1)(b) because they are deceptively misdescriptive.
[49] First, I agree with the College that the Marks mislead consumers to believe that the associated services are subject to governmental authority or approval. Specifically, I find that the use of the word “registered” – or “R” representing “registered,” which applies in all instances of the Marks, as discussed above – implies government approval or authority, which, in this case, does not exist. I find Mr. Cook’s evidence on this point convincing and, in this instance, his potentially greater knowledge of the health sector is useful in demonstrating how “registered” is normally used in the health industry. I do not find, as was suggested by the CSNN, that the use of “holistic”, being historically connected to non-traditional fields of medicine, detracts in any material way from the impression that the services associated with the Marks are subject to government approval. As noted by the court during oral submissions, while this may have been the case many years ago, this word has become more current and no longer necessarily comes with these same connotations. In any event, the CSNN has provided no evidence on this point. Additionally, as discussed above, I do not find the lack of evidence regarding consumers’ familiarity with the HPA or the College to be problematic. The very existence of the HPA and others like, along with the College and similar bodies created under legislation, contributes to an environment where there are many professional healthcare titles which use “registered” – and “R” meaning “registered” – to exclusively denote governmental regulation and with which the public regularly come into contact.
[50] Moreover, I find that the evidence of enquiries made to the College regarding the CSNN’s graduates helps show that there has been instances of confusion regarding governmental oversight of the services associated with the Marks. While I acknowledge, as noted by the CSNN, that Ms. Omerzu’s list provides no indication of the exact nature or content of these enquires, I find that it is not inappropriate to infer that, if the public is contacting the College to determine whether a given person using one or more of the CSNN’s Marks is registered with it, then it means that they think it likely that these Marks and/or the services associated with them are linked with a governmental body. Though the CSNN notes that insurance companies rather than individuals made these enquiries, it offers no explanation why this should make a difference. Indeed, insurance companies, if anything, should be in an even better position than members of the public to know, as CSNN submits, that the Marks do not imply governmental supervision, as they ought to be more familiar with the industry than the average person. The fact that they are still making enquiries with the College shows that the Marks are indeed quite misleading.
[51] Finally, even if the Marks did not suggest governmental supervision, I agree with the College that the Marks are nonetheless deceptively misdescriptive due to the inclusion of the word “registered” – or “R” meaning “registered.” This word implies that the person who provides services associated with the Marks is part of an organization or whose name can be found on some type of record. Indeed, as indicated by the College, the verb to “register” is commonly known to mean to “enter or record on an official list or directory.” In this case, however, there is no such list or directory and no indication that graduates using the Marks are in anyway “registered” with the CSNN, other than possibly as alumni.
(4) Acquired Distinctiveness of the Marks [52] Marks that are clearly descriptive or deceptively misdescriptive, can be saved under subsection 12(2) of the TMA if they have acquired distinctiveness. The relevant date for this assessment would be the date of application for the Marks. Consequently, all use in subsequent years must be discounted: Miranda Aluminum Inc v Miranda Windows & Doors Inc, 2009 FC 669.
[53] The CSNN submits that its Marks have acquired distinctiveness pursuant to subsections 12(2) and 18(2) of the TMA. It points out that distinctiveness exists where nothing about a mark refers the customers to a multitude of sources. It can be both inherent – where a mark is a unique or invented name such that it could only refer to one thing – or acquired – where a mark has become known to consumers as originating from one particular source through continual use in the market place: Tommy Hilfiger Licensing Inc v Produits de Qualité IMD Inc, 2005 FC 10 [Tommy Hilfiger] at paras 52-53. Whether a given mark is distinctive is a question of fact, with the test being “whether a clear message has been given to the public that the wares with which the trade-mark is associated and used are the wares of the trade-mark owner and not those of another party:” Tommy Hilfiger at para 58.
[54] The CSNN submits that given their continual use in the marketplace, the Marks meet the test for distinctiveness.
[55] The CSNN submits that it can adopt its graduates’ use as it meets the require