Canadian Council of Professional Engineers v. Kelly Properties, LLC

Canadian Council of Professional Engineers v. Kelly Properties, LLC
Court (s) Database
Federal Court Decisions
Date
2012-11-21
Neutral citation
2012 FC 1344
File numbers
T-412-11
Decision Content
Federal Court
Cour fédérale
Date: 20121121
Docket: T-412-11
Citation: 2012 FC 1344
Ottawa, Ontario, November 21, 2012
PRESENT: The Honourable Mr. Justice O'Keefe
BETWEEN:
CANADIAN COUNCIL OF PROFESSIONAL ENGINEERS
Applicant
and
KELLY PROPERTIES, LLC
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1] This is an appeal under section 56 of the Trade-Marks Act, RSC 1985, c T-13 (the Act) from a decision of a hearing officer of the Registrar of Trade-marks (the officer) dated December 23, 2010, rejecting the Canadian Council of Professional Engineers’ opposition to the respondent’s application No. 1,220,370 for the trade-mark KELLY ENGINEERING RESOURCES (the trade-mark). This conclusion was based on the officer’s finding that all the appellant’s grounds of opposition to the trade-mark failed.
[2] In its notice of application, the Canadian Council of Professional Engineers sought the following relief:
1. An order on appeal, pursuant to section 56 of the Trade-marks Act, setting aside the decision of the Registrar of Trade-marks in which the Canadian Council of Professional Engineers’ opposition to application No. 1,220,370 was rejected;
2. Canadian Council of Professional Engineers’ costs of this application; and
3. Such further and other relief as to this Honourable Court may seem just.
[3] In its memorandum of fact and law, the Canadian Council of Professional Engineers requested the following relief:
1. A declaration that the Registrar of Trade-marks erred in rejecting the Canadian Council of Professional Engineers’ opposition to application No. 1,220,370 for the trade-mark KELLY ENGINEERING RESOURCES;
2. An order reversing the decision of the Registrar of Trade-marks and holding that the trade-mark KELLY ENGINEERING RESOURCES was not used in Canada as of the date of first use claimed in the trade-mark application, that Kelly Properties, LLC has not established a valid claim under section 14 of the Trade-marks Act, that the subject trade-mark is deceptively misdescriptive and is thus not registrable, and that the trade-mark KELLY ENGINEERING RESOURCES was not distinctive of Kelly Properties, LLC’s services as of the material date;
3. An order refusing trade-mark application No. 1,220,370 for the trade-mark KELLY ENGINEERING RESOURCES; and
4. The costs of this application.
Background
[4] The appellant in this appeal is the Canadian Council of Professional Engineers (CCPE, appellant or applicant). CCPE represents the provincial and territorial associations of professional engineers (the constituent associations) that have legislative authority to license engineers and regulate the profession of engineering in Canada. In eleven of these jurisdictions, corporations engaged in the provision of engineering services must also be licensed (through certificates or permits).
[5] On behalf of the constituent associations, the appellant opposes trade-mark applications that include the designation engineering by persons or corporations not qualified to engage in the practice of engineering. The appellant assumes this role to prevent the use of a name, title, description or designation that may lead the public to believe that the trade-mark owner is qualified or entitled to engage in the practice of engineering in Canada when they are not so qualified or entitled, thereby protecting public safety and welfare.
[6] The respondent, Kelly Properties LLC, is a wholly owned subsidiary of Kelly Services. Kelly Services is an American company that provides personnel employment services. To address specialized staffing needs, the respondent has created divisions directed towards specific employment lines which aims to provide companies with “qualified engineers, designers, drafters and technicians”, hence, the trade-mark at issue here. The respondent is not registered to engage in the practice of engineering in any Canadian jurisdiction.
[7] The parties in this application have previously been before the Trade-marks Opposition Board (TMOB) with regards to the same trade-mark (see Canadian Council of Professional Engineers v Kelly Properties Inc, [2004] TMOB No 68, 37 CPR (4th) 537). That case pertained to the respondent’s January 1999 application to register the trade-mark based on proposed use in Canada. CCPE opposed the application under sections 10 and 30, subparagraph 9(1)(n)(iii) and paragraphs 12(1)(a) and 12(1)(b) of the Act. The TMOB denied these grounds of opposition but nevertheless found that the trade-mark was not distinctive. The decision was not appealed and the trade-mark was therefore not registered.
[8] On June 15, 2004, the respondent filed a new application to register its trade-mark based on use in Canada since April 1999 and use and registration in the United States. The services associated with the trade-mark were defined as follows (the listed services):
Personnel employment services, namely providing temporary, temporary to full-time, and full-time employees having specialized technical skills, education and/or training.
[9] On December 6, 2005, the respondent amended its application to also include a basis of registration under section 14 of the Act (collectively referred to herein as the application).
[10] The application was advertised in the Trade-marks Journal on December 29, 2004. On February 24, 2005, the appellant filed a statement of opposition against the application. On December 21, 2007, the appellant applied to amend its statement of opposition to include a ground of opposition under subsection 30(b) of the Act. The application was accepted on March 10, 2008.
[11] Collectively, the appellant’s grounds of opposition are summarized as follows. The trade-mark is:
- not compliant with subsection 30(i) of the Act;
- not compliant with subsection 30(b) of the Act as it was not used in Canada in association with the listed services as of the claimed date of first use;
- not registrable under paragraph 12(1)(b) of the Act as it is clearly descriptive or deceptively misdescriptive;
- not registrable under section 14 of the Act as it is without distinctive character, is contrary to public order and is of such a nature as to deceive the public;
- not registrable and prohibited by paragraph 12(1)(e) and section 10 of the Act; and
- not distinctive under paragraph 38(2)(d) and section 2 of the Act.
[12] The respondent filed a counter statement on April 6, 2005 and an amended counter statement on January 16, 2009.
Officer’s Decision
[13] The officer issued her decision on December 23, 2010.
[14] After briefly introducing the timeline of the parties’ submissions and the grounds of opposition, the officer addressed the parties’ evidentiary burden. She noted that the initial evidentiary burden is on the opponent (the appellant in this appeal) to adduce sufficient admissible evidence from which it can reasonably be concluded that the facts alleged exist to support each ground of opposition. Once that burden is met, it shifts to the trade-mark applicant (the respondent in this appeal) who must prove on a balance of probabilities that the grounds of opposition should not prevent the registration of its trade-mark.
[15] For this application, the officer listed the following material dates:
Date of filing of the application for compliance with paragraph 12(1)(b) and subsection 30(i) of the Act: June 15, 2004;
Date of first use claimed in the application for compliance with subsection 30(b) of the Act: April 1999;
Date of the decision for compliance with paragraph 12(1)(e) and for the issue of availability of section 14 of the Act: December 23, 2010;
Date of filing of the statement of opposition for the ground of non-distinctiveness: March 10, 2005.
Review of Evidence
[16] The officer then summarized and made some observations on the affidavits filed by the two parties. Beginning with the appellant’s evidence, the officer noted the respondent’s objection to much of the evidence contained in affidavit No. 2 of Deborah Eatherley. However, the officer found that the university websites should be considered authoritative sources of information with respect to their course listings. Thus, the officer gave this evidence some weight, but ultimately found it not determinative.
[17] The officer then considered the affidavit of John Kizas. From Mr. Kizas’s reference to statutes regulating engineering in Canada, the officer observed that the relevant provisions prohibit persons from engaging in the practice of professional engineering or using a term that would lead the public to believe that the services offered are within the practice of professional engineering. However, the officer noted that none of the provisions appear to prohibit the use of the word engineering in a trade-mark where the trade-mark does not lead a consumer to believe that the associated services are engineering services or performed by a professional engineer. On the legislation governing corporate and business names, the officer noted that the relevant provisions do not govern terms such as trade-marks.
[18] Turning to the respondent’s evidence, the officer noted the affidavit of John W. Lichtenberg which provided a background on the respondent and its operations. The officer noted that the promotional material on which the trade-mark was displayed had a copyright date of 2002. However, she observed that no evidence was provided to lead to the inference that these materials had been distributed in Canada at any time. The officer also noted the excerpts from four magazines that Mr. Lichtenberg stated were published in April 1999 and circulated in Canada. She observed that these magazines appeared to be U.S. based.
[19] The officer noted that during cross-examination, Mr. Lichtenberg was asked to produce evidence that the respondent had actually provided the services listed in the application as of April 1999 and that the trade-mark had been used in Canada as of April 1999 and June 15, 2004. Mr. Lichtenberg refused to answer these questions claiming they were irrelevant as, at the time, the statement of opposition did not include a subsection 30(b) ground of opposition. Mr. Lichtenberg did provide examples from advertisements using the trade-mark in publications circulated in Canada in 2004. Although the appellant objected to the information from the respondent’s advertising agency on the approximate Canadian circulation of these magazines, the officer granted it some weight as she found it reasonable to assume that this information would be acquired by advertising agencies in the normal course of business and would be within the purview of Mr. Lichtenberg’s position as vice president of marketing management.
[20] The officer acknowledged Mr. Lichtenberg’s evidence of use of the trade-mark on third party websites advertising job openings. However, the officer noted that this did not indicate advertising of any positions in Canada. Similarly, a sample direct mailing pamphlet displaying the trade-mark and third party articles referencing the trade-mark did not evidence distribution in Canada. With respect to the annual reports attached to Mr. Lichtenberg’s affidavit, the officer noted that there was no specific reference to the services provided under the trade-mark. However, these documents indicated that there was an office opened in Toronto in 1998.
[21] The officer then turned to the affidavits (No. 1 and 2) of Karin French. Ms. French’s second affidavit was provided in response to the appellant’s addition of the subsection 30(b) ground of opposition. The officer noted that Ms. French’s evidence was directed more towards events in Canada than Mr. Lichtenberg’s evidence. Ms. French stated that Kelly brand employment services have been offered in Canada since at least as early as 1968 with the respondent currently owning 16 trade-mark registrations in Canada for employment services. Ms. French also stated that the respondent’s services were available to users in Canada through the respondent’s website since at least as early as 1999. Although the number of hits from users in Canada was unavailable before 2003, Ms. French stated that the number of hits from users in Canada was 110,947 in 2003, 92,955 in 2004 and over 60,000 annually for the years 2005 to 2008.
[22] The officer also considered the affidavit of Julianne Norris, a legal assistant who obtained certified copies of the Canadian trade-mark registrations for various Kelly trade-marks. The officer noted that the registrations were all for personnel employment services. In some instances, the services were more distinctively described to target a specific employment sector. Further, Lisa Saltzman, director of the trade-mark searching department of a company specializing in corporate name searching, explained in her affidavit that Kelly has a technical definition in the mining industry, has significance as a place name in Canada and is used extensively as a first name. The meaning of Kelly was also researched by Jane Griffith. The evidence in her affidavit was similar to that in Ms. Saltzman’s affidavit. It indicated technical definitions of Kelly and some place name and first name significance.
[23] The officer then addressed the appellant’s Rule 43/44 evidence. Leslie Kirk’s affidavit provided evidence of archived versions of the website www.kellyengineering.com. The officer noted that the evidence source used by Ms. Kirk had been accepted as generally reliable in the jurisprudence. Archived websites from May 29, 2002 through to April 28, 2007 all featured the trade-mark prominently. However, Canada did not appear in the drop down menu of countries available to users. Nevertheless, the officer noted that information about the services indicated that the respondent provided services worldwide. The officer also noted Ms. Kirk’s evidence of Toronto Yellow Page directory listings for the category employment from 1998 to 1999 through to 2007 to 2008. The listing for each year contained at least one reference to Kelly services, however, the trade-mark did not appear on any of these pages.
[24] After reviewing the parties’ evidence, the officer turned to the analysis of the appellant’s grounds of opposition.
Opposition under Subsection 30(i) of the Act
[25] The officer dismissed the appellant’s ground of opposition under paragraph 38(2)(a) and subsection 30(i) of the Act for lack of supporting facts and lack of evidence of bad faith on the part of the respondent. The officer accepted the respondent’s argument that allegations of non-compliance with provincial statues cannot be grounds under subsection 30(i). The officer also found that the appellant had not led any evidence to suggest that the respondent was holding itself out as engaging in the practice of engineering. The officer further noted that this ground had been dismissed previously by the TMOB in Kelly Properties (2004) above.
Opposition under Subsection 30(b) of the Act
[26] The officer noted that paragraph 38(2)(a) and subsection 30(b) of the Act require continuous use by the applicant of its trade-mark in association with its services from its claimed date of use through to the filing of the trade-mark application. The officer cited jurisprudence on the burden of proof for these provisions. She noted that a trade-mark opponent may refer to both its own evidence and that of the trade-mark applicant’s in showing non-conformance with subsection 30(b) of the Act. However, if the opponent relies on the trade-mark applicant’s evidence, it must be shown that the applicant’s evidence is clearly inconsistent with its claims as set forth in its application.
[27] The officer noted the appellant’s submissions that Canada did not appear on the drop down list of country options on the respondent’s website. However, she did not find that this absence was clearly inconsistent with the respondent’s claimed date of first use since the use relied on was through print media. The officer was also not convinced that the absence of Canada from the drop down list was categorical evidence that the services were not available to users in Canada. Given the print ads, the statement of Ms. French and the existence of the office in Toronto, the officer concluded that there was nothing clearly inconsistent with the evidence that the respondent was in a position to offer its services in association with the trade-mark as of April 1999 and that it continues to do so. The officer therefore concluded that this ground of opposition must also fail.
Opposition under Paragraph 12(1)(b) of the Act
[28] Under this ground of opposition, the appellant argued that the trade-mark was clearly descriptive or deceptively misdescriptive of engineering services. The officer noted that this issue must be considered from the standpoint of the average purchaser of the associated wares. The trade-mark must also not be dissected into its component elements, but rather be considered in its entirety as a matter of immediate impression in association with the listed services.
[29] The officer found that, although not possessing a high degree of inherent distinctiveness, the trade-mark did not contravene paragraph 12(1)(b) of the Act. She found that the trade-mark did not clearly describe or deceptively misdescribe that the respondent is an engineering firm or that it offers engineering services. Rather, the officer found that the trade-mark merely suggests that Kelly provides resources either for those looking for jobs in an area of engineering or for engineering firms looking for personnel, who may be, but are not necessarily engineers.
[30] The officer distinguished the facts of this application from those in Canadian Council of Professional Engineers v Krebs Engineers, [1996] TMOB No 93, 69 CPR (3d) 267. In Krebs above, the trade-mark was found clearly descriptive or deceptively misdescriptive of the persons employed in the production of applied for wares. In distinguishing the two cases, the officer noted that the trade-mark here pertained to service and not wares and the subject services here were not considered specific to engineers. In addition, the objected to portion of the trade-mark did not describe the persons producing or providing the services.
[31] The officer also distinguished Canadian Council of Professional Engineers v John Brooks Co, 2004 FC 586, [2004] FCJ No 720 where the offending trade-mark contained the word engineers, leading to it being more likely that a consumer would assume the said services were provided by engineers. The officer noted that in this case, the trade-mark only contained the word engineering. In addition, she observed that personnel employment services would not be the type of technical services that one would expect engineers to provide. Further, the word resources was equally as significant as the word engineering in the trade-mark. Thus, the officer concluded that the trade-mark did not offend paragraph 12(1)(b) of the Act. As such, she deemed it unnecessary to consider whether the trade-mark was registrable under section 14 of the Act.
Opposition under Paragraph 12(1)(e) and Section 10 of the Act
[32] Under these grounds of opposition, the appellant alleged that the term engineering had become recognized in Canada as designating services provided by licensed engineers. However, the officer noted that the term engineering in the trade-mark was being used in association with personnel employment services rather than in association with services in the same general class as those provided by licensed engineers. In addition, the officer reiterated that the term engineering together with resources in the context of employment services was not likely to be misleading. The officer further noted that there was no evidence demonstrating that the term engineering has become recognized in Canada as designating a kind, quality or value of personnel employment services. Thus, the officer concluded that this ground of opposition also failed.
Opposition under Paragraph 38(2)(d) and Section 2 of the Act
[33] On this final ground, the officer noted that the material date was the date of filing of the opposition, namely, February 22, 2005. She further noted that typically under this ground, an opponent bears the evidentiary burden of demonstrating sufficient use by it or a third party to negate distinctiveness of the trade-mark. Here, however, the claim was founded on the rationale that the trade-mark has no distinctiveness and is incapable of distinguishing the services provided in association with the name Kelly from the services of others who might have the same name.
[34] The officer considered it important that the respondent had filed evidence of promotion and sales of services in Canada and internationally under the word Kelly. The officer also found it persuasive that the respondent’s website had received significant hits from users in Canada. Based on the evidence that Kelly Services is a large international staffing provider, the officer concluded that the word Kelly has acquired distinctiveness such that the trade-mark as a whole can function to distinguish the respondent’s services from similar services of others. The officer therefore found that this ground of opposition must also fail.
[35] As the officer found that all grounds of opposition to the trade-mark failed, she rejected the appellant’s opposition to the application pursuant to subsection 38(8) of the Act.
Issues
[36] The appellant submits the following points at issue:
1. The appellant has filed substantive additional evidence in these proceedings and the respondent has not. In view of the additional evidence filed, which is unchallenged by cross-examination or by rebuttal evidence, what is the correct standard of review of the officer’s decision?
2. Grounds of opposition based on subsection 30(b) of the Act;
(a) The appellant has filed evidence, both before the officer and before this Court, that puts into question the date of first use claimed in the subject application. Has the appellant sustained its initial evidentiary burden to put the issue of the accuracy of the claimed date of first use into play?
(b) Has the respondent sustained its legal onus to establish its claimed date of first use in Canada?
(c) Has the respondent established that its trade-mark has sufficient distinctive character in Canada to sustain its reliance on paragraph 14(1)(b) of the Act?
3. Grounds of opposition based on paragraph 12(1)(b) of the Act:
(a) In view of the evidence, is the trade-mark unregistrable on the basis that it is deceptively misdescriptive?
4. Grounds of opposition based on paragraph 38(2)(d) of the Act:
(a) In view of the evidence, is the trade-mark deceptively misdescriptive and therefore not distinctive?
(b) Has the respondent sustained its legal onus to establish that its trade-mark is distinctive in Canada?
[37] I would rephrase the issues as follows:
1. What is the appropriate standard of review?
2. Did the officer err in her assessment of the date of first use of the trade-mark under subsection 30(b) of the Act?
3. Did the officer err in her assessment of whether the trade-mark was clearly descriptive or deceptively misdescriptive under paragraph 12(1)(b) of the Act?
4. Did the officer err in her assessment of whether the trade-mark was distinctive under paragraph 38(2)(d) and section 2 of the Act?
Appellant’s Written Submissions
[38] The appellant submits that the respondent’s application contravenes subsection 30(b), paragraph 12(1)(b), section 14, section 2 and paragraph 38(2)(b) of the Act.
New Evidence Filed on Appeal
[39] On this appeal, the appellant filed new affidavit evidence from: Michael H. Neth, Kenneth C. McMartin, Stephen Haddock, Paul Barbeau and D. Jill Roberts. The appellant highlighted the following information in these affidavits.
[40] Michael H. Neth is the Director Compliance of the Association of Professional Engineers Geologists and Geophysicists of Alberta (APEGGA). Mr. Neth noted that in Alberta, companies that practice engineering and carry on a business under a name that includes the designation engineering must hold a permit to practice. Mr. Neth observed that the respondent does not hold a permit to practice in Alberta.
[41] Mr. Neth also attached the APEGGA Compliance Guideline for Human Resources and Staffing Agencies to his affidavit (the APEGGA Policy). This policy provides the following guidance on determining when human resources or staffing agencies are engaged in the practice of engineering:
When all four of the following criteria are met it is APEGGA’s position that agency is engaged in the practice of engineering, geology or geophysics in Alberta:
(i) the agency places an employee such that any portion of their work is undertaken in Alberta, and
(ii) the employee’s activities (in Alberta) meet the definition of the practice of engineering, geology, or geophysics given in Section 1 of the EGGP Act, and
(iii) the employee is a professional engineer, geologist or geophysicist, and
(iv) the recipient of professional services (the customer) pays the agency a fee for services while the agency in turn pays the employee for their labor.
[42] Mr. Neth noted that APEGGA has initiated two proceedings against businesses offering services in the field of human resources and staffing. In response, one of the two, Randstad Engineering, obtained a valid permit to practice engineering in 2010. The case for the second, the respondent in this appeal, was opened in October 2009. However, due to difficulties with compelling evidence from non-members, the file remains open and unresolved. Mr. Neth also noted a common challenge with international companies that come from jurisdictions that do not protect the engineering designations. However, he stated that precedents set elsewhere do not influence APEGGA’s enforcement of its statute in Alberta.
[43] Kenneth C. McMartin is the appellant’s Director of Professional and International Affairs. Mr. McMartin noted that foreign companies engaged in the practice of engineering in any jurisdiction in Canada must meet the same legal requirements of the constituent associations as Canadian companies.
[44] Stephen Haddock is the Compliance Officer, Regulatory Compliance of Professional Engineers Ontario (PEO). Mr. Haddock noted that the respondent is not registered as an Ontario business name and has never held a certificate of authorization to offer or provide professional engineering services in Ontario.
[45] Paul Barbeau is the President of hyperNet Inc., an Ottawa based company that provides services related to database driven web sites and custom web applications. He explained that a website hit represents the download of one piece of software or code from a website. Each page viewed comprises multiple hits. As such, a hit does not represent an independent and unique visit to a website. In addition, many hits are likely attributable to non-human special purpose computer programs known as bots, spiders or crawlers. It is not always possible to distinguish human visitors from these programs.
[46] Due to the nature of the respondent’s webpage which may entail a single user looking for new and updated job postings, Mr. Barbeau stated that over a thousand hits may be registered to a single user who makes five visits to the website. In support, Mr. Barbeau attached a report of the information that had been downloaded from a single visit that he made to the respondent’s website in 2011. This report indicated 44 hits coming from Mr. Barbeau’s address.
[47] Mr. Barbeau also explained that he conducted two types of searches on the website www.kellyengineeringresources.com. The results from a WHOIS search indicated that this domain name was registered on August 4, 2003. The second search, based on unidentified databases, revealed that this website had first been crawled on February 7, 2005.
[48] Finally, Mr. Barbeau explained that a drop down list of countries on a website is specifically designed to include only those countries where services are offered. Thus, if a country is omitted from that list, it is likely that services are not offered in that country.
[49] D. Jill Roberts conducted an Ontario business name search for the respondent’s name on July 5, 2011. This search revealed no registration of the respondent’s name as part of a business name.
Standard of Review
[50] The appellant submits that on appeals under section 56 of the Act, the record before the Court includes both the evidence filed before the officer and any new evidence filed before the Court. The appellant submits that in these appeals, the appropriate standard of review must be determined ab initio. Thus, although officers’ decisions are generally reviewed on a reasonableness standard, where new evidence is adduced that would have materially affected the officer’s findings of fact or exercise of discretion, the appropriate standard of review is correctness. The appellant submits that the new evidence in this appeal provides information that was not available to the officer and addresses factual and legal issues that the officer did not take into account and that would have materially affected her decision.
[51] Specifically, the appellant submits that the affidavit of Mr. Neth established that the type of activities referred to in the application fall within the scope of engineering practice that would require a permit to practice under Alberta law. Mr. Neth’s affidavit also established that the respondent does not hold a permit and its case remains open and unresolved for possible violations in relation to representation and the practice of engineering. In addition, the appellant submits that Mr. Neth’s affidavit addresses the officer’s questions on whether the respondent would be perceived as offering engineering services when providing engineering employment services to those seeking employment or to employers seeking the services of professional engineers. Thus, the appellant submits that had the officer had Mr. Neth’s affidavit, her analysis under paragraph 12(1)(b) of the Act would have been different.
[52] Turning to Mr. Barbeau’s affidavit, the appellant submits that it confirms that a hit on a website does not represent an independent or unique visit to that site. This evidence indicates that the 100,000 annual hits referred to in the respondent’s evidence and relied on by the Registrar in finding that the trade-mark was distinctive may in fact represent as few as 90 individuals and crawlers accessing the website from Canada. Thus, the appellant submits that this evidence directly contradicts the assumptions expressed in the officer’s decision that the “website received significant hits from users in Canada”. Further, the appellant submits that Mr. Barbeau’s affidavit provides evidence on the importance of a website country drop down list in establishing whether business activity in fact occurs in a particular country.
[53] In summary, the appellant submits that the new evidence, in particular the affidavits from Mr. Neth and Mr. Barbeau, would have materially affected the officer’s decision. This evidence was specifically directed to concerns raised in the decision and would therefore have required some analysis and consideration. Thus, the appellant submits that the decision must be reviewed on a standard of correctness and this Court must undertake its own analysis rather than defer to the officer’s decision.
[54] Before proceeding to the other issues, the appellant also notes that as its new evidence has not been the subject of cross-examination or contradicted by rebuttal evidence from the respondent, it must be taken at face value. The appellant submits that a negative inference may also be drawn from the respondent’s failure to cross-examine and its failure to introduce additional evidence to contradict the appellant’s new evidence.
Opposition under Subsection 30(b) of the Act
[55] The appellant submits that the officer erred in fact and in law in holding that the respondent had provided the date of first use of its trade-mark. Both parties’ evidence negates the claim that the respondent has used the trade-mark in Canada continuously since April 1999. The appellant notes that use as defined in subsection 4(2) of the Act means that the services must be rendered in Canada and that the services advertised in Canada must be performed or at least offered and prepared to be performed in Canada.
[56] Relying on Mr. Barbeau’s affidavit, the appellant submits that on corporate websites it is likely that services are not provided in countries excluded from country drop down lists. The appellant notes that Canada did not appear on the respondent’s website’s country drop down menu until April 2007, long after the alleged date of first use. The appellant submits that this evidence meets the light burden for establishing facts under subsection 30(b) of the Act when the trade-mark opponent uses its own evidence to mount a challenge thereunder.
[57] The appellant also submits that a trade-mark opponent may rely on the trade-mark applicant’s evidence to sustain its de minimus burden on this issue. As such, the appellant notes that the respondent’s in-house documents omit reference to Canada in association with the trade-mark. The appellant also highlights that the respondent refused to answer on cross-examination the express question to produce evidence to corroborate that it had provided the services listed in its application as of April 1999. The appellant submits that a failure to answer proper questions or to fulfill undertakings may result in the drawing of a negative inference. As that is what happened here, the appellant submits that the officer erred in failing to draw an adverse inference from the respondent’s refusal to answer these questions.
[58] Concurrently, the appellant submits that the officer erred in accepting the respondent’s argument that the answers to the questions were irrelevant as the statement of opposition did not include a subsection 30(b) opposition at the time of the cross-examination. The appellant notes that the refusals to answer the questions were filed on March 28, 2008, three months after it filed its application to amend the statement of opposition and two weeks after the officer accepted the amended statement of opposition (March 10, 2008). The appellant also notes that the respondent did not provide conclusive evidence of the use of its trade-mark as of April 1999 in the second affidavit of Karen French sworn on December 22, 2008. Further, pursuant to Rule 245 of the Federal Courts Rules, SOR/98-106, the appellant submits that the respondent has a continuing obligation to disclose answers to questions on cross-examination on its claimed date of first use.
[59] The appellant submits that the officer erred in law in not finding that the respondent’s allegations that four periodicals that circulated in Canada in 1999 and 2004 were inadmissible hearsay. The appellant notes that the respondent’s witnesses had no personal knowledge as to whether the publications, in which the advertisements appeared, had any circulation in Canada. The provision of this information from their advertising agency was therefore hearsay. The respondent’s witnesses were also unable to confirm that the telephone number listed in the advertisements was available in Canada. The appellant notes that the TMOB has repeatedly held that unaudited circulation figures for magazines is hearsay and inadmissible. Nevertheless, the appellant submits that advertisement of the trade-mark in U.S. magazines, even if they are circulated in Canada, does not indicate that the services were in fact offered in Canada. It merely indicates that they were offered in the U.S.
[60] Finally, the appellant relies on McDonald's Corp v Canada (Registrar of Trade Marks), [1989] 3 FC 267, [1989] FCJ No 410 in support of its submission that the respondent cannot rely on use and registration abroad to save its application where it makes a false statement on its claimed date of first use. At the hearing, the appellant explained that trade-mark applicants should not be entitled to make a number of different claims and then later rely only on those that have not been denied. Thus, where a trade-mark application made under date of first use in Canada is denied, the appellant submits that the trade-mark applicant cannot claim that the argument is moot and simply rely on another one of its claims, such as use and registration of the trade-mark in the United States.
Opposition under Paragraph 12(1)(b) of the Act
[61] The appellant submits that the respondent’s disclaimer of the words engineering and resources constitutes an admission that those words are not registrable in respect of the listed services included in its application.
[62] The appellant submits that the evidence demonstrates that the respondent’s services under the trade-mark are directed to the engineering profession or companies seeking the assistance of professional engineers and that the respondent is performing engineering services in Canada. In support, the appellant highlights that the respondent:
- advertises in engineering publications;
- sends representatives to advertise at engineering trade shows;
- attends university campuses to advertise and attract engineering graduates;
- advertises that it “specializes in providing companies around the world with qualified engineers, designers, drafters and technicians”;
- employs engineers in the U.S. and Canada;
- is the employer of some of the engineers that it places with other companies; and
- has admitted that the words engineering resources indicate the nature of services being provided.
[63] The appellant also notes that engineering in a professional title will inevitably refer to the profession of engineering.
[64] The appellant also submits that the evidence clearly places the respondent’s services within the scope of management engineering. Management or industrial engineering is a sub-branch of engineering that is concerned with the design, improvement and installation of integrated systems of people, materials and equipment. Canadian universities offer joint programs that combine engineering and business studies and the Canadian Society for Engineering Management represents those engineers whose primary functions involve the use of management skills.
[65] The appellant notes that a staffing agency is practicing engineering if the criteria listed in the APEGGA Policy are met. The appellant submits that the respondent focuses on recruiting and placing individuals with engineering expertise and that approximately 4,000 engineering professionals are generally employed by the respondent’s engineering resources division. Thus, it is clear that the respondent’s activities fall squarely within the scope of the practice of professional engineering.
[66] At the hearing, the appellant focused its submissions on the trade-mark being deceptively misdescriptive and did not make any submissions on the trade-mark being clearly descriptive.
[67] The appellant submits that the disclaimed words engineering and resources as used in the trade-mark are deceptively misdescriptive of the respondent’s services. In addition, as the word Kelly is non-descriptive, the disclaimed words constitute a dominant portion of the trade-mark. In support, the appellant notes that:
- Kelly is a well-known surname;
- several people licensed to practice engineering in Canada have the surname Kelly;
- it is common for engineering firms to do business under the surname of a firm member followed by a descriptive term related to engineering; and
- the respondent’s evidence indicates that Kelly has a multiple of meanings including significance as a