College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada

College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada
Court (s) Database
Federal Court Decisions
Date
2009-10-29
Neutral citation
2009 FC 1110
File numbers
T-1810-07
Decision Content
Federal Court
Cour fédérale
Date: 20091029
Docket: T-1810-07
Citation: 2009 FC 1110
BETWEEN:
COLLEGE OF TRADITIONAL CHINESE
MEDICINE PRACTITIONERS AND
ACUPUNCTURISTS OF BRITISH COLUMBIA
Plaintiff
and
COUNCIL OF NATURAL MEDICINE
COLLEGE OF CANADA
Defendant
REASONS FOR JUDGMENT
ISSUED SEPTEMBER 25, 2009
O’KEEFE J.
[1] The plaintiff has filed this motion for summary judgment pursuant to Rules 213 and 216 of the Federal Court Rules, SOR/98-106; subsection 7(d), sections 9 and 10, paragraphs 12(1)(b), 12(1)(e) and subsection18(1) and other such sections of the Trade-marks Act, R.S.C. 1985, c. T-1 that may be material to the issues; sections 12.1, 12.2, and 13 of the Health Professions Act, R.S.B.C. 1996, c. 183; sections 2 and 3 of the Traditional Chinese Medicine Practitioners and Acupuncturists Regulations, B.C. Reg. 290/2008; section 3 of the Private Career Training Institutions Act, S.B.C. 2003, c. 79; section 3 of the Degree Authorization Act, S.B.C. 2002, c. 24; and subsection 34(1) of the Regulated Health Professions Act, 1991, S.O. 1991, c. 18.
[2] The plaintiff requests the following relief:
1. A permanent injunction restraining the defendant and each of its partners, principals, officers, directors, employees, agents, licensees, and all those over whom the defendant exercises control or with whom it acts in concert, from:
(a) adopting, using, licensing and otherwise authorizing others to use the following abbreviations and words in association with educational training, certification and registration services, the operation of a traditional Chinese medicine or acupuncture clinic, and the practice of traditional Chinese medicine and acupuncture:
i. Dr. TCM (DOCTOR OF TRADITIONAL CHINESE MEDICINE);
R. TCM. H. (REGISTERED TCM HERBALIST); R. TCM.P. (REGISTERED TCM PRACTITIONER); R. AC. (REGISTERED ACUPUNCTURIST);
(collectively, the CTCMA Titles);
D.T.C.M. (DOCTOR OF TRADITIONAL CHINESE MEDICINE) (Reg. No. 645,215) D.P.C.M. (DOCTORATE IN PHILOSOPHY IN CHINESE MEDICINE) (Reg. No. 688,121) D.P.C.M (DOCTORATE OF PHILOSOPHY IN CHINESE MEDICINE) (Reg. No. 651,062) D.P.O.M. (DOCTORATE OF PHILOSOPHY IN ORIENTAL MEDICINE) (Reg. No. 688,625) D.P.O.M. (DOCTORATE OF PHILOSOPHY IN ORIENTAL MEDICINE) (Reg. No. 657,881) R. AC. (REGISTERED ACUPUNCTURISTS) (Reg. No. 688,974)
(collectively, the “CNMCC Registrations”);
REGISTERED D.T.C.M. ( App. No. 1,287,662); DR.TCM (App. No. 1,327,138); D.T.C.M. (DOCTOR OF TRADITIONAL CHINESE MEDICINE) (App. 1,286,663) REGISTRED D.P.C.M. (App. No. 1,287,663) P.D.T.C.M. (POST DIPLOMA OF TRADITIONAL CHINESE MEDICINE) (App. No. 1,307,304)
(collectively, the “Other CNMCC Marks”);
and all abbreviations and words that are confusingly similar thereto; are likely to lead to the belief that the services in association with which it is used are a professional designation or a degree, or have otherwise received governmental approval; or any mark so nearly resembling such a mark as to be likely to be mistaken therefore, including but not limited to:
D.T.H.M. (DOCTOR OF TRADITIONAL HERBAL MEDICINE) (App. No. 1,316,624) R. TCM. P. (REGISTERED TCM PRACTIONER) (App. No. 1,286,903) C. AC. (CERTIFIED ACUPUNCTURIST) (App. No. 1,352,994) L. AC (LICENSED ACUPUNCTURIST) (App. No. 1,352,993) A.P.D.T.C.M. (ADVANCED POST DIPLOMA OF TRADITIONAL CHINESE MEDICINE) (App. No. 1, 307,305) N.H.D. (NATURAL HEALTH DOCTOR) (App. No. 1, 287, 679) N.H.P. (NATURAL HEALTH DOCTOR) (Reg. No. 623, 382) N.H.D. (Reg. No. 697,475) R.HMP. (REGISTERED HOLISTIC MEDICINE PRACTITIONER) (App. No. 1,350,404) H.M.P. (HOLISTIC MEDICINE PRACTITIONER) (App. No. 1,350,383) H.M.D. (HOLISTIC MEDICINE DISPENSARY) (Reg. No. 683,669) N.M.D.P. (NATURAL MEDICINE DATABASE PRACTITIONER) (Reg. No. 678,641) N.M.D.P. (NATURAL MEDICINE DATABASE PRACTITIONER) (Reg. No. 667,191) NATURAL MEDICINE DATABASE PRACTITIONER (Reg. No. 624,470) D.H.M. (DOCTORATE IN HOLISTIC MEDICINE) (Reg. No. 685,490) D.H.M. (DOCTORATE IN HOLISTIC MEDICINE) (Reg. No. 626,327) D.N.H.P. (DOCTORATE IN NATURAL HEALTH PRODUCTS) (Reg. No. 687,873) D.N.H.P. (DOCTORATE IN NATURAL HEALTH PRODUCTS) (Reg. No. 668,592) D.P.N.H. (DOCTORATE IN PHILOSOPHY IN NATURAL HEALTH) (Reg. No. 650,931) D.P.N.H. (DOCTORATE IN PHILOSOPHY IN NATURAL HEALTH) (Reg. No. 680,867) D.H.H. (DOCTORATE IN HOLISTIC HEALTH) (Reg. No. 644,831) D.H.H. (DOCTORATE IN HOLISTIC HEALTH) (Reg. No. 682,664) DOCTORATE IN NATURAL HEALTH PRODUCTS (Reg. No. 639, 253) D.H.M. (DOCTORATE IN HOLISTIC MEDICINE) (Reg. No. 685,490)
2. An order requiring the defendant to deliver up to the plaintiff or destroy, on oath, all materials in the care, possession or control of the defendant that may offend the relief set out above;
3. A declaration that registrations for the trade-marks listed above are invalid, and an order expunging the said registrations;
4. A reference as to the defendant’s profits or in the alternative general damages, whichever the plaintiff may elect after an examination by the defendant, including production of documents, upon the issues of the plaintiff’s damages and the defendant’s profits, together with pre-judgment and post-judgment interest;
5. The plaintiff’s costs of this action on a solicitor and client basis, or in the alternative, such other basis as this Honourable Court may deem just.
6. Such further and other relief as this Honourable Court may deem just.
Grounds for the Motion
[3] The plaintiff submits that it governs the practice of traditional Chinese medicine and acupuncture in British Columbia pursuant to the Health Professions Act, R.C.B.C. 1996, c. 183 and the Traditional Chinese Medicine Practitioners and Acupuncturists Regulations, B.C. Reg. 385/2000.
[4] The plaintiff has been responsible for granting and controlling use of the CTCMA titles since 2000, and Registered Acupuncturist (R.Ac.) since 1996 along with its predecessor.
[5] The role of the plaintiff’s organization has been to offer educational services which includes mandatory training courses to earn the titles outlined in this motion. The defendant submits that the plaintiff’s titles are recognized in Canada as designating membership in the CTCMA organization.
The Defendant’s Trade-mark Applications and Registrations
[6] The plaintiff submits that the defendant has adopted, applied for and/or registered the long list of trade-marks for use associated with:
(a) educational services, such as course, programs, studies, training, seminars, class study, research and/or consultation, both oral and written, in the study of acupuncture and/or medicine described as “oriental” or traditional Chinese” “holistic” or “natural” medicine;
(b) certification and licensing examinations in “oriental” or traditional Chinese “holistic” or “natural” medicine or acupuncture, and the accreditation of individuals that have completed mandated courses relative to such types of medicine; and
(c) the operation of an acupuncture or “oriental” or traditional Chinese “holistic” or “natural” medicine clinic or practice;
[7] In a letter to the plaintiff on December 14, 2005, the defendant’s counsel alleged and admitted that the CTCMA title “Doctor of Traditional Chinese Medicine” (Dr. TCM) is an infringement of (and is therefore confusingly similar to) the defendant’s registration for D.T.C.M. (DOCTOR OF TRADITIONAL CHINESE MEDICINE), for use in association with education, training, associated licensing examination, and the granting of titles, and any licensing of the title to a third party to be used in association with the operation of a traditional Chinese medicine clinic.
Licenses
[8] The plaintiff alleges that the defendant has granted licenses to numerous individuals including Grace Tseng, Jade Melnychuk, David (Myong Chul) Lim, Shelley Wade and Melissa Dege, to use trade-marks such as D.T.C.M. (DOCTOR OF TRADITIONAL CHINESE MEDICINE) and N.H.D. (NATURAL HEALTH DOCTOR) in association with the operation of a traditional Chinese medicine clinic and/or other services. The use of such trade-marks by the said individuals has caused actual confusion with the plaintiff, in that members of the public and members of the plaintiff have made complaints or other inquiries about the individuals to the plaintiffs.
Prohibition Against Registration
[9] The public would assume that the associated services are offered by a professional having such a designation and as such, the designations are “clearly descriptive or deceptively misdescriptive of the persons offering the associated services, and are not permitted to be registered pursuant to subsection 12(1) of the Trade-marks Act.
[10] The use of the trade-marks listed above suggests to the public that they have received governmental approval. They are prohibited by paragraph 9(1)(d) of the Trade-marks Act and are not permitted to be registered pursuant to paragraph 12(1)(e) of the Trade-marks Act.
[11] The trade-marks so nearly resemble the marks which have “by ordinary and bona fide commercial usage become recognized in Canada as designating the kind of quality of services”. They are prohibited by section 10 of the Trade-marks Act and are not permitted to be registered pursuant to paragraph12(1)(e) of the Trade-marks Act.
Passing Off
[12] The defendant has directly and through its licensees, directed public attention to its services and business in such a way as to cause or be likely to cause confusion in Canada, between its services and business and the services and business of the plaintiff contrary to subsection 7(d) of the Trade-marks Act and the common law.
False and Misleading Statements
[13] The defendant has, in using advertising and licensing the use of the trade-marks listed above, made use of descriptions that are false in a material respect and likely to mislead the public as to the character and quality of the defendant’s services, contrary to subsection 7(d) of the Trade-marks Act. In particular, the defendant has made use of the following descriptions of itself and/or its services:
(a) responsible for reviewing and approving accreditation for educational programs thoroughout Canada;
(b) play a regulatory role to ensure the protection of the public;
(c) federally registered Council of Natural Medicine College of Canada;
(d) CNMCC registered with Government of Canada;
(e) applicants for the certification examination will be able to practice in medical-related occupations anywhere in the whole country after obtaining a license as medical doctor, traditional Chinese medicine doctor, dentist, chiropractor, hand-acupuncturist;
(f) approved by Government of Canada;
(g) federally approved; and
(h) CNMCC members are entitled to practice…Acupuncture, …Traditional Chinese Herbal Medicine, …Philosophy of Oriental Diagnosis.
[14] Furthermore, the defendant and its licensees have used one or more of the trade-marks listed above in association with, among other things, the operation of traditional Chinese medicine, in violation of the provincial statutes listed above, and have led the public to believe that the services offered are performed under government authority.
Lack of Distinctiveness
[15] The defendant’s trade-marks are not distinctive to the defendant, in that they do not actually distinguish the services of the defendant and its licensees from the services of others. Accordingly, the defendant’s trade-mark registrations are invalid pursuant to paragraph 18(1)(b) of the Trade-marks Act.
[16] The defendant admits in paragraph 14 of its statement of defence that words such as Doctor of Traditional Chinese Medicine, Doctorate of Philosophy in Chinese Medicine, Registered Acupuncturists and Doctorate of Philosophy in Oriental Medicine have been used by other persons.
Not the Person Entitled to Secure Registration
[17] The defendant was not and is not the person entitled to ensure the registration of the trade-marks listed above, because the defendant does not have the right to adopt and use the said trade-marks, due to the provincial statutes listed above.
[18] The defendant was not and is not the person entitled to secure the registration of the trade-marks listed above because they are confusing with the titles which have been previously used or made known in Canada by the plaintiff, pursuant to subsections 16(1) and (3) of the Trade-marks Act.
[19] Accordingly, the defendant’s registrations are invalid pursuant to subsection 18(1) of the Trade-marks Act.
Summary Judgment
[20] By virtue of the admissions of the defendant and the evidence filed herein, there is no genuine issue for trial with respect to the validity of the defendant’s trade-marks and the liability of the defendant.
[21] The only genuine issue to be tried is that of quantum of damages or an accounting of the defendant’s profile, which may be efficiently determined on a reference.
Background
[22] The plaintiff (CTCMA or the College) was established in 2000 superseding the College of Acupuncturists of British Columbia (the CABC). The CABC was regulated under the Health Professions Act in 1996 when it was established. The College is a health regulatory body responsible for regulating the practice of traditional Chinese medicine. The College is responsible for granting and controlling use of various titles, including Doctor of Traditional Chinese Medicine (Dr. TCM) and Registered Acupuncturist (R. Ac.).
[23] The plaintiff submits that for several decades before the CABC, and subsequently the College, traditional Chinese medicine practitioners and acupuncturists operated clinics as well as training schools in British Columbia and used marks and designated titles such as Dr. TCM, Doctor of Traditional Chinese Medicine, R. Ac. and Acupuncturist.
[24] From 1996 to 2000 the CABC regulated the practice of acupuncture and from 2000 and on, the College regulated the broader practice of traditional Chinese medicine.
[25] The plaintiff, as a regulatory body created by the provincial legislature, is restricted in its regulation of traditional Chinese medicine and acupuncture to British Columbia.
[26] As a professional regulatory body, the plaintiff grants registration of an applicant as a member of its College if the applicant meets the criteria set out in its by-laws, including successful completion of an educational program and the CTCMA Registration Exams. However, the plaintiff does not create, administer, or evaluate educational programs or the examinations necessary to complete such educational programs.
[27] The defendant, CNMCC, was incorporated as a non-profit company, under federal legislation on December 4, 2002. CNMCC creates educational programs and examinations in the field of traditional Chinese medicine and acupuncture. Each educational program and examination is associated with a certain trade-mark. The CNMCC does not teach the programs it creates. The educational programs are provided to students by private schools.
[28] The defendant’s practice is not to confer degrees. It only provides students who have completed their educational programs and examinations with a certificate indicating completion.
Issues:
[29] The plaintiff raised the following issues:
The CNMCC trade-marks are prohibited against registration under the Trade-marks Act:
(a) The trade-marks are clearly descriptive or deceptively misdescriptive, and are not registrable pursuant to section paragraph 12(1)(b);
(b) The trade-marks are likely to lead to the belief that the associated services have received government approval. They are prohibited by paragraph 9(1)(d) and are not registrable pursuant to paragraph 12(1)(e).
(c) The trade-marks so nearly resemble marks which have, by ordinary commercial usage, become recognized in Canada as designating the kind and quality of services. They are prohibited by section 10 and not registrable pursuant to paragraph 12(1)(e).
(d) The trade-marks are not distinctive of the defendant. The registrations are invalid pursuant to paragraph 18(1)(b).
(e) The defendant was not and is not the person entitled to secure the registration of the trade-marks. The registrations are invalid pursuant to subsection 18(1).
The defendant and its licensees have, in using, advertising and licensing the use of the trade-marks at issue, made use of descriptions of their services that are false in a material respect and likely to mislead the public as to the character and quality of their services, contrary to subsection 7(d).
[30] I would re-phrase the issues as follows:
Does this Court have jurisdiction to hear this motion? Is the plaintiff estopped from proceeding because of delay? Is this an appropriate case to grant summary judgment? Is the Beckett affidavit admissible? Can the trade-marks in the notice of motion but not in the statement of claim be included in this motion? Are the CNMCC trade-marks prohibited, not registrable or invalid pursuant to paragraphs 12 (1)(b), 9(1)(d), section 10, paragraph 18(1)(b) or subsection 18(1) of the Trade-marks Act? Does the CNMCC’s use of the CNMCC trade-marks constitute a breach of subsection 7(d) of the Trade-marks Act?
Plaintiff’s Submissions
Summary Judgment
[31] The plaintiff submits that there is no genuine issue for trial and that summary judgment should be granted. The plaintiff points to a number of decisions that state that “the mere existence of a conflict in the evidence should not preclude summary judgment, unless there is a genuine issue of fact” (see Granville Shipping Co. v. Pegasus Lines Ltd. S.A., [1996] 2 F.C. 853, 111 F.T.R. 189 (T.D.)).
[32] There are no significant material issues of credibility. Much of the decision making in this case relates to facts that are plain and clear. For example, if a mark is descriptive, then a mark will describe it. In this case, there is not much controversy on the evidence aside from the affidavit of Daryl Beckett, upon which the plaintiff does not rely.
General Principles
[33] The plaintiff cites Canadian Council of Professional Engineers v. Lubrication Engineers, Inc., [1992] 2 F.C. 329 (C.A.) at paragraph 2; Atlantic Promotions Inc. v. Canada (Registrar of Trade-Marks) (1984), 2 C.P.R. (3d) 183 (F.C.T.D.) at paragraphs 9 and 10; Wool Bureau of Canada Ltd. v. Canada (Registrar of Trade-Marks) (1978), 40 C.P.R. (2d) 25 (F.C.T.D.) at paragraph 11 for issues regarding the registrability of a mark. The registrability of a mark is related to the point of view of the everyday user of the wares and services and must not be carefully analyzed and dissected into its component parts but must be considered in its entirety as a matter of first impression and imperfect recollection. This is true even where portions of the mark are disclaimed.
Descriptiveness
[34] The plaintiff states that the date of filing is not material in this case. The purpose of a trade-mark is to distinguish a mark from others.
[35] The plaintiff states that for a mark to be descriptive, the question to ask is whether its descriptiveness is self-evident. The plaintiff then turns to a whole series of cases on the word “engineer” as a descriptive or distinguishing word. The plaintiff points out that save for one of the cases, as soon as you put “engineer” in the title, the public will think a professional engineer. The plaintiff points out that this is the case even when the word engineer is paired with other words.
[36] The plaintiff states that in the Lubrication Engineers, Inc. above, Mr. Justice Hugessen stated that:
[i]n the same way as marks such as “Pipefitters” wrenches, “Doctors” thermometers, or “Surveyor’s” theodolites, the trade mark “Lubrication Engineers” grease is prima facie unregistrable.
[37] The defendant has admitted that many of the words have been used before but the acronyms themselves make them descriptive. The CNMCC has, with few exceptions, used trade-marks consisting of few initials followed by a phrase in parentheses that describes either the occupation or a degree, such as D.T.C.M. (DOCTOR OF TRADITIONAL CHINESE MEDICINE) or D.P.C.M. (DOCTORATE OF PHILOSOPHY IN CHINESE MEDICINE).
[38] Also with few exceptions, the CNMCC has disclaimed these phrases, conceding that they are clearly descriptive. One exception to the disclaimer is for R.AC (REGISTERED ACUPUNCTURISTS), where the CNMCC has conceded that the words registered and acupuncturists are clearly descriptive individually and not as a phrase.
[39] The plaintiff states that “[w]here there is a descriptive phrase in parentheses dominating the mark, the initials do nothing to distinguish the descriptive phrase”.
[40] The services for which the CNMCC has registered or sought to register its various trade-marks fall into three categories:
educational, such as offering courses, training and examinations; regulatory, such as certification and licensing; and clinical, such as the operation of a clinic.
[41] According to the plaintiff, all three types of services at issue are intimately associated with the practice of the occupation or profession described in each phrase.
[42] The marks Dr. TCM and REGISTERED D.P.C.M have been used interchangeably in the profession historically to refer to a doctor of traditional Chinese medicine.
[43] The phrase REGISTERED ACUPUNCTURISTS and the abbreviation R.Ac describe acupuncturists, in particular, acupuncturists that are registered to practice acupuncture.
[44] The plaintiff submits that D.T.C.M. also describes a doctor of traditional Chinese medicine as it has been used interchangeably with Dr. TCM by practitioners over years and as documented in the evidence provided.
[45] The word REGISTERED next to an abbreviation, reinforces the descriptive message to the public that the doctor has been registered to practice. The plaintiff notes that the word REGISTERED has been disclaimed in its two relevant applications.
[46] The plaintiff also states that these marks are descriptive because they describe services provided by a doctor of traditional medicine and/or acupuncturist, and the level of education and qualifications obtained by such practitioners.
[47] The plaintiff then links many of the trade-marks to three types of services that are at issue and submits that they are intimately associated with each doctoral degree. Further, the degree describes the character of the services. DOCTOR OF PHILOSOPHY IN CHINESE MEDICINE, DOCTORATE OF PHILOSOPHY IN ORIENTAL MEDICINE and POST DIPLOMA OF TRADITIONAL CHINESE MEDICINE are not different as they all describe a doctoral degree obtained through a course of study in Chinese medicine. The plaintiff submits that this same reasoning can be applied to the many other DOCTORATE degrees applied for or registered with the CNMCC.
[48] From a regulatory perspective, the second category, the plaintiff states that individuals would be attracted to a body offering certificates for any of these degrees upon completion of their study because they describe the program of study.
[49] From the perspective of clinical services, the third category, an individual is likely to seek out a practitioner displaying DOCTORATE OF PHILOSOPHY IN CHINESE MEDICINE because they will surmise that the practitioner has the level of education described.
[50] The four exceptions to the general pattern of the CNMCC’s trade-marks (abbreviations followed by descriptive phrases) are Dr. TCM, REGISTERED D.T.C.M., REGISTERED D.P.C.M. AND N.H.D.
[51] Dr. TCM and REGISTERED D.T.C.M. are submitted, as above, to be historical terms for doctors of Chinese medicine that have been used interchangeably.
[52] REGISTERED D.P.C.M. has the problem of being descriptive:
…applying the first test of first impression and imperfect recollection, D.P.C.M. is so similar to D.T.C.M. in the context of Chinese medicine that changing one letter does not serve to distinguish the mark from D.T.C.M.
(Paragraph 72 of the plaintiff’s memorandum of fact and law)
[53] The defendant’s argument that the acronyms are what make the marks distinctive is in error. Obvious acronyms or initials to a descriptive phrase do not distinguish the acronyms.
Governmental Approval – Paragraph 9(1)(d)
[54] The plaintiff alleges that the CNMCC uses its trade-marks in such a manner that is deceptive to the public and which suggests that there is government authority granting them a license to call themselves a doctor or other title of a recognized profession.
[55] The plaintiff states that it is apparent that there is confusion resulting from the CNMCC trade-marks and that licensees of the CNMCC trade-marks believe that they have some sort of federal authority to call themselves a Doctor of Traditional Chinese Medicine which has caused doctors themselves, as well as members of the public, to make enquires to the CTCMA.
[56] The plaintiff states that the date of this Court’s decision is the material time for determining whether a trade-mark is likely to lead to the belief that the CNMCC’s services are performed under governmental authority contrary to the Trade-marks Act (see Bank of Montreal v. Midland Walwyn Capital Inc. (1998), 86 C.P.R. (3d) 555 (T.M.O.B.) at paragraph 17, citing Canadian Olympic Association v. Allied Corp. (1989), 28 C.P.R. (3d) 161 (F.C.A.) and Olympus Optical Company Ltd. v. Canadian Olympic Association (1991), 38 C.P.R. (3d) 1 at paragraphs 3 and 4 (F.C.A.)).
[57] The plaintiff states that a mark prohibited under paragraph 9(1)(d) is a mark that is likely to lead to the belief that the associated services have received or are performed under government authority (see Canada Post Corp. v. The Post Office (2001), 15 C.P.R. (4th) 267 (T.M.O.B.) at paragraph 11).
[58] Resemblance to a mark that conjures government authority must be determined in the context of whether a person who, on a first impression, knowing one mark only and having an imperfect recollection of it, would likely be deceived and confused (see Big Sisters Assn. of Ontario v. Big Brothers of Canada, [1997] F.C.J. No. 627 and Midland Walwyn above).
[59] The plaintiff provided evidence that Ms. Cindy Leung reacted to Ms. Grace Tseng’s business card with Ph.D and N.H.D. after her name by contacting government authorities including the College of Physicians and Surgeons of British Columbia and the CTCMA. For a description of the relationship between Ms. Leung and Ms. Tseng, see paragraph 87 of these reasons.
[60] The CTCMA is responsible for the regulation, granting and control of Dr. TCM (Doctor of Traditional Medicine), R. TCM.H (Registered TCM Herbalist), R. TCM.P (Registered TCM Practitioner) as of 2000 and R.Ac as of 1996 from the College of Acupuncture and the by-laws of the College governing the granting of titles.
[61] Government regulation of the health professions in British Columbia is important to the issues in this motion because contraventions of the prohibitions in section 12.1 of the Health Professions Act are specific offences under section 51 underscoring the importance of protecting professional titles. The plaintiff submits that although the defendant takes exception to the information submitted in the affidavit of Daryl Beckett, Mr. Beckett was simply stating that health professions are regulated under the Health Professions Act in British Columbia. The Ministry of Health issued a report entitled, “Safe Choices: A New Model for Regulating Health Professions in British Columbia” and stated in part that:
[r]eserved titles afford a means for consumers to identify the different types of health care providers, to distinguish the qualified from the unqualified and to differentiate those practitioners who are regulated and those that are not.
[62] The granting of degrees is also closely regulated by government under the Degree Authorization Act which prohibits unless authorized, under section 3, granting a degree; providing a program leading to a degree; advertising a program leading to a degree; or selling a diploma, certificate, document or other material that indicates or implies the granting or conferring of a degree. Similar to the Health Professions Act, offences are committed when a person grants a degree without authority.
[63] The Private Career Training Institutions Act states that private schools must be a registered institution. If the registered institution is not accredited, it must not suggest to the public that it is an accredited institution.
[64] However, the manner in which the completion of courses or examinations by the CNMCC is presented to the public suggests that when completed, the certificate holder is a doctor, for example. It is how the terms have been used that has gone beyond the legislation and regulations.
[65] The plaintiff states that in particular, two of the trade-marks are names of professions: DTCM and R.Ac. The title Doctor of Traditional Medicine and Registered Acupuncturist are regulated by the CTCMA. Therefore, DTCM and R.Ac imply government authority. In fact, the plaintiff submits that DTCM and R.Ac are not only obvious acronyms for those phrases but are also acronyms that are commonly used in the profession.
[66] These titles have been used and publicized on application forms, information notices, and certificates and in quarterly newsletters. It is also pointed out that the acronyms DTCM and Dr. TCM are used interchangeably by the CTCMA in their registration forms for the safety course.
[67] The defendant admits that these titles are used to describe a person’s work or education and are recognized in Canada as designating membership in the CTCMA.
[68] The defendant argues primarily that people are not confused because they know that CNMCC provides educational products and CTCMA provides accreditation. However, this distinction is misleading and not evident according to the plaintiff given the following submissions.
[69] The manner in which the CMNCC operates is outlined by the plaintiff. The CNMCC is a non-profit corporation registered under the Canada Corporations Act-Part II. Shanghai TCM College, which is referred to by the defendant, has the same address of the CNMCC in British Columbia. Dr. Skye Willow is the principal of both organizations and one of six directors of the CNMCC. The directors of CNMCC are all residents of British Columbia. The address for the CNMCC in Ottawa is a mail drop.
[70] The CNMCC is not a statutory college and is not authorized by the provincial or federal governments to license, register, certify or accredit students or practitioners in the field of Chinese medicine.
[71] The conduct of the CNMCC in association with its trade-marks is salient to the issues raised by the plaintiff. After obtaining the trade-mark registration for D.T.C.M. (Doctor of Traditional Chinese Medicine) on August 2, 2005, the CNMCC’s lawyer wrote to the CTCMA. The letter asked the CTCMA to “immediately cease and desist from using the phrase ‘Doctor of Traditional Chinese Medicine (Dr. TCM)’ or any confusingly similar mark in association with your business”.
[72] After obtaining the trade-marks, the CNMCC issued 27 certificates from May 2006 to August 2007 which stated that a given individual:
… has met the qualifications provided for in the By-Law of COUNCIL OF NATURAL MEDICINE COLLEGE OF CANADA and has passed the examinations set by Board and as a health professional in Traditional Chinese Medicine (Operation in Clinic) and is hereby accredited and the designation:
DOCTOR OF TRADITIONAL CHINESE MEDICINE (D.T.C.M.)
[73] The license agreement with the individuals who have been granted these certificates grants an exclusive, royalty-free license to the licensee and conform to the defined standards of accredited designation. Further, subsection 1(4) states that:
The Licensee acknowledges that the Specified Trade-mark(s) indicates to the public that the Licensee has received certification and has the abilities to deliver competent and professional services in his/her area of expertise.
[74] Schedule A of the CNMCC license agreement defines services as the operation of traditional Chinese medicine in the clinic. Schedule B of the license states in part:
The above certification(s) identify that the user of the certification(s) has fulfilled, both in theory and in clinical practice, the required number of hours and has successfully completed the competency exams. The certification indicates to the public that the user of this certification has the abilities to deliver competent and professional services in his/her expertise.
[75] The plaintiff states that it is clear from the licensing agreement that the trade-marks of the CNMCC are being used in association with a license to run a medical clinic. The plaintiff also points out that save one licensee in Washington state, all disclosed licenses were issued to residents of British Columbia.
[76] The plaintiff submits that a letter written by the CNMCC to the city of Vancouver in August 29, 2006 proves the intent to mislead people as to their role. The letter states, amongst other things, that the CNMCC accredits educational programs throughout Canada and also plays a regulatory role in ensuring the protection of the public through their own Code of Ethics. The letter also points to the CNMCC website which included a section, at that time, which said that CNMCC members were entitled to practice oriental diagnosis, acupuncture, and traditional Chinese medicine, among other things.
[77] Ms. Watterson, in her affidavit, suggests that this is intentionally misleading and constitutes a threat to public safety. In response, Ms. Watterson prepared an alert and distributed it to municipalities to help avoid the confusion she felt was bound to result.
[78] The plaintiff then provides evidence of five situations where individuals have advertised or claimed to have certification, registration or licensing as a Doctor of Traditional Medicine through the CNMCC licenses despite not being registered with the CTCMA.
[79] Jade Melnychuk joined the Ocean Wellness Clinic in North Vancouver and advertised in October 2006 that she was a practitioner as a Doctor of TCM and NHD. This came to the attention of a CTCMA registrant who contacted the CTCMA for clarification when he did not find Ms. Melnychuk to be a registrant with the CTCMA.
[80] The titles for Ms. Melnychuk on the website are Dr. Jade Melnychuk, NHD, DTCM with a subheading Natural Health Doctor and Doctor of Traditional Chinese Medicine. The plaintiff points out that the NHD title was a new trade-mark registered by the CNMCC meant for those individuals with a DTCM or Doctor in Traditional Chinese Medicine.
[81] The CTCMA investigated and found that the Ocean Wellness Clinic had stated that certification and registration of a DTCM (Doctor of Traditional Chinese Medicine) and Natural Health Doctor (NHD) was a title that was new to Canada and is a federal license rather than the more common provincial license of many DTCM’s and acupuncturists in B.C.
[82] Ms. Watterson was told that Ms. Melnychuk was certified federally. Ms. Melnychuk stated in a letter to the CTCMA that:
[u]nder license from the CNMCC, I am permitted to display the D.T.C.M. (Doctor of Traditional Chinese Medicine) and NHP [sic] trade-marks in the operation of my practice.
[83] The plaintiff suggests that Ms. Melnychuk is confused into believing that she has some form of governmental authority or approval in her license to practice as a Doctor of Traditional Medicine or Natural Health Doctor in British Columbia.
[84] Mr. David (Myong Chul) Lim is another example of confusion in the public realm according to the plaintiff. A public health inspector from Fraser Health Authority called the CTCMA enquiring about Dr. Lim’s business license application to open a clinic as a Doctor of Traditional Chinese Medicine, Natural Health Doctor and Alternative Medical Practitioner. Mr. Lim was found not to be a Doctor of Traditional Chinese Medicine nor a naturopathic physician by the CTCMA.
[85] The plaintiff submits that the third example is particularly compelling because it involves an individual, Ms. Shelley Wade, who was registered with the CTCMA as a R. Ac. However, Ms. Wade was also advertising that she was a DTCM, NHP, and CBS. The plaintiff submits that the CTCMA found that she was not registered and entitled to practice naturopathic medicine or traditional Chinese medicine. Nevertheless, states the plaintiff, Ms. Wade maintained that DTCM was put behind her name simply to prove a level of education attained and attached a portion of the CNMCC website which claimed that CNMCC members are entitled to practice alternative medicine.
[86] In the case of Melissa Dege, Ms. Watterson received a call from Rosaleen Stefani of the Business Licensing and Proper Use section of the city of Coquitlam’s legal department who was not certain of Ms. Dege’s credentials to practice as a DTCM (Doctor of Traditional Medicine) and NHP (Natural Health Doctor).
[87] In the final case of Grace Tseng, the CTCMA was approached by Cindy Leung who was concerned about the treatment Ms. Tseng had given her sister-in-law and nephew. Ms. Tseng’s business card stated an N.H.D. and Ph.D. after her name and her website stated that she holds a Ph.D. degree in Oriental Medicine and was licensed as a Natural Health Doctor. Ms. Leung stated that these credentials suggested that Ms. Tseng was registered with the CTCMA or the College of Physicians and Surgeons in British Columbia.
[88] The plaintiff also outlines an advertising and information session which indicated confusion in the public sphere. A session on CNMCC licensing in newspaper advertisements and brochures provides more of the CNMCC indicating that they act with government authority.
[89] Of all of the programs provided by the Shanghai College, only one is accredited: the R. Ac program. The name of the program is purely descriptive.
[90] The CNMCC claims to have a doctorate program but this is in every way contrary to provincial statutes.
[91] The DPCM or DPOM is really about traditional medicine.
[92] The CNMCC website claims that the purpose of the certification process is that it provides assurance that the public knows the education attained through the CNMCC. After examinations on these courses, then the website claims that students have the privilege of using the designated trade-mark from the given course. CNMCC then grants the use of the title or grants the right to use names of courses through a trade-mark license. The natural result, submits the plaintiff, is that practitioners use these titles in operation of a clinic and do not necessarily go through the CTCMA.
[93] The plaintiff states that this is exactly what the CTCMA is authorized to do: certification.
[94] Further, the defendant has all the trappings of a regulatory body like the CTCMA and its application is very similar to the CNMCC application. The natural result of what the CNMCC has structured in regards to licensing a trade-mark is that practitioners use the titles in the operation of a clinic. For the plaintiff, there is every indication that the CNMCC intends for it to do that, despite the claims that it encourages students to register through the CTCMA.
[95] The information required by students for the CNMCC goes beyond educational. The CNMCC asks for citizenship, social insurance information, any other licences, clinical practice record, professional ethics and that they will voluntarily surrender a license to practice. They also ask for a criminal record check. The registrar is a mail box drop in Ottawa.
[96] Again, this appears to the plaintiff as having all the trappings of a regulatory body. The CTCMA application for registrants is very similar to that of the CNMCC.
[97] The plaintiff also points out that the defendant is inconsistent in its explanation of CNMCC as a purely educational institution. In the CNMCC counsel’s letter to