LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 18
Date of Decision: 2016-01-28
IN THE MATTER OF AN OPPOSITION
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H.R. Herchen Professional Corporation |
Opponent |
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John Caldwell Professional Corporation |
Applicant |
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1,588,560 for MOUNT
ROYAL DENTAL CENTRE |
Application |
[1] The Applicant has filed an application to register the trade-mark MOUNT ROYAL DENTAL CENTRE (the Mark).
[2] The application was filed based on use of the Mark in Canada since at least as early as May 1, 2010 in association with “general dentistry, cosmetic dentistry, reconstructive dentistry, implant dentistry, and dental hygiene services”.
[3] The Opponent has opposed the application for the Mark on the basis that: (i) the application does not comply with section 30 of the Trade-marks Act, RSC 1985, c T-13 (the Act); (ii) the Mark is not registrable under section 12(1)(b) of the Act; (iii) the Mark is not registrable under section 12(1)(e) of the Act, as it is a mark, the adoption of which is prohibited by section 9(1)(n)(iii) of the Act; and (iii) the Mark is not distinctive under section 2 of the Act.
[4] For the reasons that follow, I refuse the application.
Background/Record
[5] The application for the Mark was filed by the Applicant on August 1, 2012.
[6] It was advertised for opposition purposes in the Trade-marks Journal dated April 24, 2013. On May 27, 2013, the Opponent filed a statement of opposition to oppose it under section 38 of the Act.
[7] The statement of opposition was amended during the course of the proceeding and some grounds of opposition were struck as a result of an interlocutory ruling. The remaining grounds of opposition are based upon sections 30(a), 12(1)(b), 12(1)(e), and 2 (distinctiveness) of the Act.
[8] A counterstatement was filed by the Applicant on December 4, 2013.
[9] In support of its opposition, the Opponent filed the affidavit of Janice Ariyanayagam, sworn April 3, 2014, and the affidavit of Dr. Hans Herchen, also sworn April 3, 2014. Neither affiant was cross-examined on their affidavits.
[10] In support of its application, the Applicant filed the affidavit of Dr. John Caldwell, sworn July 28, 2014, the affidavit of Katherine Dedul, sworn July 28, 2014, and a certified copy of the file history for the subject trade-mark application. Dr. Caldwell was cross-examined on his affidavit and the transcript of the cross-examination has been made of record.
[11] As evidence in reply, the Opponent filed the affidavit of Sandra Ortiz, sworn August 14, 2014. Ms. Ortiz was not cross-examined on her affidavit.
[12] Both parties filed written arguments and attended an oral hearing.
Onus and Material Dates
[13] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is, however, an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could be reasonably concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD); Dion Neckwear Ltd v Christian Dior, SA et al, 2002 FCA 29, 20 CPR (4th) 155; and Wrangler Apparel Corp v The Timberland Company, 2005 FC 722, 41 CPR (4th) 223].
[14] The material dates that apply to the grounds of opposition are as follows:
• Sections 38(2)(a)/30(a) – the filing date of the application [see Delectable Publications Ltd v Famous Events Ltd (1989), 24 CPR (3d) 274 (TMOB)];
• Sections 38(2)(b)/12(1)(b) – the filing date of the application [see Fiesta Barbeques Ltd v General Housewares Corp, 2003 FC 1021, 28 CPR (4th) 60];
• Sections 38(2)(b)/12(1)(e) – the date of my decision [see Canadian Council of Professional Engineers v Groupegénie Inc (2009), 78 CPR (4th) 126 (TMOB) and Canadian Olympic Assn v Olympus Optical Co (1991), 38 CPR (3d) 1 (FCA)]; and
• Sections 38(2)(d)/2 - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, 2004 FC 1185, 34 CPR (4th) 317].
Overview of the Parties’ Evidence
The Opponent’s Evidence
The Ariyanayagam Affidavit
[15] Ms. Ariyanayagam, a patent and trade-mark paralegal employed by the Opponent’s trade-mark agent, provides the results of a search of the Canadian Trade-marks Database for marks containing “MOUNT ROYAL”. She attests that she located a total of 13 marks advertised or registered by Mount Royal University or its predecessor, and attaches as Exhibit A to her affidavit, webpage printouts from the database of each of these marks. A complete list of the particulars of those marks can be found in Schedule A to this decision.
[16] In addition, under Exhibit B to her affidavit, Ms. Ariyanayagam provides the results of a search she conducted on April 2, 2014 of the website 411.ca for listings of businesses or other entities within 30 km of Calgary using the words “Mount Royal”. The first page of the results indicates that there are 171 such results for “mount royal”, and the search results as a whole show that there are a variety of businesses which incorporate “mount royal” into their business or trade-name (with for e.g. towing, insurance, chiropractic services, etc.). In addition, there are 102 results from Mount Royal College, and 3 results from Mount Royal University.
[17] Similar to the 411.ca search results, Ms. Ariyanayagam provides as Exhibit C to her affidavit, as copy of the results for a search that she conducted on April 2, 2014 of the website yellowpages.ca for listings of businesses and other entities in Calgary using the words “Mount Royal”. There are approximately 30 results which include “mount royal”, which again appears to demonstrate that there are a variety of businesses in the Calgary area which incorporate “mount royal” into their business or trade-name.
The Herchen Affidavit
[18] Dr. Herchen, the owner and only director of the Opponent, practices dentistry in Alberta, including operating a dental clinic on the campus of Mount Royal University in Calgary.
[19] As Exhibit B to his affidavit, he provides a screenshot from Google Maps which shows the location of the Opponent’s dental clinic as well as the Applicant’s location, approximately 7 km apart. He further provides as Exhibit C to his affidavit, a copy of the webpage for the clinic operated by the Opponent on the Mount Royal University campus.
[20] Dr. Herchen attests that what is now Mount Royal University was founded in approximately 1910 as a primary and secondary school and then became Mount Royal College in 1931. He attests that it was then renamed Mount Royal University in 2009, and is located at 4825 Mount Royal Gate SW, Calgary, Alberta. In support of these attestations, he provides as Exhibit D, a Wikipedia article on Mount Royal University setting out its history, and as Exhibit E, a copy of a webpage from Mount Royal University’s website showing the address of the university and other information on its founding.
[21] Dr. Herchen attests that the Opponent occupies space in the Student’s Union Building pursuant to a sublicense agreement entered into in December, 2009 between the Opponent’s predecessor, and the Student’s Association of Mount Royal College. He provides as Exhibit G, an excerpt from the agreement. He attests that the sublicense agreement was assigned to the Opponent pursuant to a Consent to Assignment of Sublicense dated April 2, 2012, a copy of which is attached as Exhibit F to his affidavit.
[22] Dr. Herchen states that the Opponent operates as Dental Choice Mount Royal, and in support, he attaches a variety of marketing materials as Exhibit H to his affidavit. He attests that the Opponent also operates as Mount Royal Dental Choice and that it is his understanding that the Opponent has the consent of Mount Royal University, through its Student’s Association, to use the words “Mount Royal” in the operating name of the Opponent.
[23] Lastly, in addition to being known as an educational institution, Dr. Herchen attests that “Mount Royal” is known as a geographic area in Calgary, Alberta. He provides, as Exhibit I to his affidavit, another article from Wikipedia which describes Mount Royal as an area or neighbourhood of Calgary that was established in 1904. He states that the Applicant’s clinic is located just north of the northern boundary of the Mount Royal neighbourhood identified in this article; he attests that this is just one block away from a building known as Mount Royal Village, which is from his understanding, a well-known landmark in or near the Mount Royal area of Calgary.
The Applicant’s Evidence
The Caldwell Affidavit
[24] Dr. Caldwell attests that since at least as early as May 1, 2010, he has been promoting and providing the services set out in the subject application in the Canadian marketplace in association with the Mark, and has continuously used the Mark in Canada to distinguish these services since that date. He attests that since May 1, 2010, his dentistry practice has generated revenue in excess of $2.5 million.
[25] Dr. Caldwell states that he has invested significantly in promoting his dentistry services in association with the Mark. He provides a table of annual advertising expenditures which includes Yellow Pages ads, business cards, signage, and other promotional items such as brochures, all of which he states display the Mark.
[26] As further support of his aforementioned statements regarding the promotion and provision of the services in association with the Mark, Dr. Caldwell provides the following (at Exhibits B, C, D, and F respectively): sample invoices, photographs of business signage, a business card and envelope, and a yellowpages.ca advertisement, all of which clearly display the Mark. The invoices, issued to a patient for dentistry services, are dated between 2010 and 2014. Dr. Caldwell states that the business card and envelope (which is used when mailing invoices), have been used since at least as early as May 1, 2010 and that he has advertised in the Yellow Pages every year since May 1, 2010. He further provides at Exhibits E and G respectively, photographs of a playhouse for children located inside his dental clinic displaying the Mark, which he attests is a replica of the signage used outside of his clinic, and an image of a toothbrush bearing the Mark, representative of those distributed to patients of the Applicant’s dentistry services.
[27] Lastly, as Exhibit H to his affidavit, he provides a copy of his rating as found on the RateMDs.com website.
The Dedul Affidavit
[28] Ms. Dedul, a legal assistant employed by the Applicant’s trade-mark agent, conducted searches of the Canadian Trade-mark Register, using the following criteria: “mount royal” and “mont royal” in the TM Lookup field, “Trade-marks”, “All Active” and “Advertised” between the dates 1865-01-01 and 2014-07-14. She attaches as Exhibit A, the results for the search for “mount royal”, wherein 8 results were located, and as Exhibit B, the results for the search for “mont royal”, in which 7 results were located.
[29] In addition to the aforementioned searches, Ms. Dedul conducted a Google search for the term “mount royal”, as well as a search to obtain information from the Wikipedia.com website pertaining to the “Mount Royal” located in Montreal, Quebec, the Mount Royal Avenue located in Montreal, Quebec, and the Town of Mount Royal, located in Quebec. She attaches under Exhibit C, the results of these further searches.
[30] On July 28, 2014, she also conducted an Internet search for “mount royal montreal Quebec”, “town of mount royal Quebec”, “mount royal avenue montreal Quebec”, and “mount royal Calgary”, the results of which are attached as Exhibit D to her affidavit. The results include the Wikipedia.com entries for “Mount Royal”, “Mount Royal, Quebec”, and “Mount Royal Avenue”.
[31] Ms. Dedul then attaches as Exhibit E to her affidavit, printouts from montreal.com, featuring information on Mount Royal Park in Montreal, printouts from www.town.mount-royal.qc.ca, featuring information on the town of Mount Royal, Quebec, and printouts from mountroyalstation.ca, featuring information on the Mount Royal neighbourhood in Calgary.
[32] Lastly, Ms. Dedul attaches as Exhibit F to her affidavit, Wikipedia.com search results pertaining to the Mount Royal neighbourhood in Calgary, Alberta. I note that this article is the same article that is included in Exhibit C to her affidavit, as well as in Exhibit I to the Herchen affidavit.
The Opponent’s Reply Evidence
The Ortiz Affidavit
[33] Ms. Ortiz, a paralegal employed by the Opponent’s trade-mark agent, conducted a number of searches on August 14, 2014 on the RateMDs.com website. In particular, she conducted searches using the terms “John Caldwell”, “Caldwell”, “Mount”, “Royal”, “Mount Royal” and “Mount Royal Dental Centre”. She attests that she conducted those searches under the specialties “dentist”, “orthodontist”, and “oral surgeon”, and by selecting “all” as gender.
[34] She attaches as Exhibits A and B to her affidavit, the results obtained with respect to searches for “John Caldwell” and “Caldwell”, the results of which she attests are similar to those shown in Exhibit H to Dr. Caldwell’s affidavit. She notes that as in Exhibit H to Dr. Caldwell’s affidavit however, there is no reference to the term MOUNT ROYAL in Exhibits A and B.
[35] Ms. Ortiz further attests that there were no results that matched the remaining aforementioned search criteria. In support, she attaches as Exhibits C through H, copies of the results she obtained from the foregoing searches.
Summary of Cross-Examination of Dr. Caldwell
[36] The cross-examination mainly involved asking Dr. Caldwell questions concerning his familiarity with the Mount Royal neighbourhood in Calgary and the Mount Royal Village shopping centre, including their proximity to his dental practice. Further questions concerned Dr. Caldwell’s awareness of Mount Royal University, as well as queries regarding the absence of any reference to “Mount Royal” on the RateMDs.com search results in Exhibit H to his affidavit.
Ground of Opposition based on Non-compliance with Section 30(a)
[37] The Opponent alleges that the application does not comply with section 30(a) of the Act in that application does not contain a statement in ordinary commercial terms of the specific services in association with which the trade-mark is proposed to be used.
[38] The Opponent’s initial evidential burden under section 30(a) is a light one. In fact, the Opponent may need only present sufficient argument in order to meet its initial burden [see McDonald’s Corporation and McDonald’s Restaurants of Canada Ltd v MA Comacho-Saldana International Trading Ltd carrying on business as Macs International (1984), 1 CPR (3d) 101 at 104 (TMOB)].
[39] In the present case, however, the Opponent has provided neither evidence nor argument in support of this ground of opposition. In fact, the Opponent indicated in its written submissions and once again at the oral hearing that it would not be arguing that the Applicant has failed to conform to the requirements of section 30 of the Act. As a result, the Opponent has failed to meet its evidential burden and the ground of opposition based on section 30(a) of the Act is therefore dismissed.
Section 12(1)(b) Ground of Opposition
[40] The Opponent’s allegation that the Mark is not registrable pursuant to section 12(1)(b) of the Act is two-prong. In this regard, the Opponent alleges that the Mark is clearly descriptive or deceptively misdescriptive in the English or French language of (i) the character or quality of the services, or (ii) the place of origin of the services.
[41] With respect to the first prong, the Opponent submits that the words “DENTAL CENTRE” in the Applicant’s Mark are clearly descriptive in the English language of the character and quality of the services associated with the Mark. This much, I consider is self-evident. The Opponent further submits that the words “MOUNT ROYAL” in the Applicant’s Mark may be readily interpreted by members of the public to mean that the Applicant’s business and services are somehow associated with Mount Royal University. In this sense, the Opponent submits, the Mark is deceptively misdescriptive of the character and quality of the services associated with the Mark because the Applicant’s services are not associated with Mount Royal University.
[42] With regard to this latter allegation however, I agree with the comments of my colleague Céline Tremblay in Canada Post Corporation v Deutsche Post AG, 2011 TMOB 210, 97 CPR (4th) 1 (paras144-145), wherein she held that such a ground had been improperly pleaded:
[…] it seems to me that such an allegation relates to the issue of confusion as to the source of the Wares and Services and as such could be more appropriately and directly raised under other grounds of opposition.
In my respectful opinion, an allegation that the Mark is likely to be seen by the public as associated with the Opponent does not support a ground of opposition that the Mark is deceptively misdescriptive contrary to the provisions of s.12(1)(b) of the Act.
[43] With respect to the second prong of the section 12(1)(b) ground of opposition, the Opponent submits that the evidence shows that the term “Mount Royal” refers to a specific geographical area or neighbourhood in Calgary, as well as to a separate geographical area in Calgary comprising the campus of Mount Royal University, or areas near that campus. The Opponent submits that the Applicant’s place of business is within or, at least, adjacent to an area known geographically as Mount Royal, and is therefore descriptive of the geographic location and place of origin of the Applicant’s services. In addition, the Opponent submits, the business of the Applicant is not within the area of Mount Royal University, and it is therefore deceptively misdescriptive of the location and place of origin of the Applicant’s services.
[44] The Opponent further submits that the relevant consumer in the present case is a discrete subset of the population, namely, someone from Calgary, who would be somewhat more informed as to the geographical location and university. The Opponent submits that it would depend on the individual as to which area, be it the neighbourhood or the university that they would associate with the Mark. Thus, the Opponent submits, to some individuals, the Mark would be clearly descriptive of a dental clinic operating in the Mount Royal neighbourhood, while simultaneously, to other individuals, it would be deceptively misdescriptive of a dental clinic operating on or near the Mount Royal University campus. The Applicant, the Opponent submits, if its application is successful, would be given a monopoly over two geographic locations. Furthermore, the Opponent submits that in view of the two geographic areas, the Applicant’s Mark could never acquire distinctiveness.
[45] Once again, however, I find that the Opponent’s submissions regarding Mount Royal University, an educational institution, relate more to the issue of confusion, and thus, more appropriately fall under other grounds of opposition.
[46] The Applicant, on the other hand, submits that a geographic location commonly known to be the place of origin of certain goods and services is not registrable as a trade-mark in association with the goods or services for which it possesses a reputation [citing Great Lakes Hotels Ltd v Noshery Ltd (1968), 56 CPR 165; Benson & Hedges (Canada) Limited v Gallaher Limited 1965 CarswellNat 49; Harvard Club of Montreal v Vêtements Howick Apparel Ltd/Ltée (1986), 8 CPR 493; Dart Industries Canada Ltd v Algonquin Mercantile Corp (1987), 15 CPR (3d) 517; and Waterford Glass Group plc v Canarinda Manufacturing Ltd (1987), 16 CPR (3d) 40]. Moreover, the Applicant submits that if the average consumer would not normally expect the goods or services to come from the geographic location that is the subject of the trade-mark, then it cannot be said that this location clearly describes or deceptively misdescribes the associated goods or services.
[47] In the present case, the Applicant submits, given there are a number of geographical areas named Mount Royal in Canada, the average consumer would not, based on first impression, assume that the Applicant’s services originated from one specific area named Mount Royal. Furthermore, the Applicant submits, the Opponent has submitted no evidence to support that a particular geographical area named Mount Royal possesses a reputation in connection with the provision of dentistry services.
[48] At the oral hearing, the Applicant further relied on the decision of the Federal Court in Dr. Patrick Lum and Dr. P.K. Lum (2009) Inc v Dr. Coby Cragg Inc 2014 FC 1171, in which the trade-mark OCEAN PARK was not considered to be clearly descriptive of dental services, despite the fact that OCEAN PARK was the name of the geographical area in which the associated dental practice was located. The Applicant in particular directed attention to paragraph 14 of this decision, reproduced below:
I accept the Defendant’s position that a two-stage analysis is required in order to establish that a Trade-mark is not registrable because it is clearly descriptive of the place of origin of the services in question. Applying this analysis to the case at bar, the Plaintiffs have the onus of proving on a balance of probabilities that: (i) Ocean Park is a location, and (ii) Ocean Park is indigenous to dental services.
[49] I note however, that this decision has since recently been overturned by the Federal Court of Appeal [2015 FCA 293], wherein the Court stated at paragraph 18:
When one considers the type of services involved and the average consumers to whom such services are offered and marketed, as well as the fact that the neighbourhood has been known as Ocean Park for a very long time, a reasonable person could only conclude that the words “Ocean Park” are prima facie descriptive of the geographic location (place of origin) where the respondent’s services are actually provided.
The Federal Court of Appeal, in finding that the Federal Court had “misunderstood the meaning of paragraph 12(1)(b) of the Act and made a palpable and overriding error when applying it” also commented as follows at paragraph 19:
There is a public interest aspect to the rule set out in paragraph 12(1)(b). Generally, a trader or service provider is not entitled to monopolise the name of a geographic location so as to prevent other local traders or service providers from using that word to actually describe where their own services are provided. The only exception is provided for at subsection 12(2) of the Act.
[50] In determining that OCEAN PARK was unregistrable under section 12(1)(b) of the Act, the Federal Court of Appeal also referred to General Motors du Canada v Décarie Motors Inc, 2000 CanLII 16083 (FCA), a case that it deemed to be very similar. It was established in that case that the trade-mark at issue was a well-known boulevard in Montreal and was used by several traders operating along or in the vicinity of that boulevard, including by the owner of the trade-mark. The Court noted at paragraph 28 of that case, “that it was reasonable to say that prima facie the mark was unregistrable under paragraph 12(1)(b) due to its geographic descriptiveness (‘place of origin’).”
[51] In deciding the issue as to whether the Applicant’s Mark is clearly descriptive or deceptively misdescriptive, it must be considered from the point of view of the average purchaser of the associated services. Further, the Mark must not be dissected into its component elements and carefully analyzed but must be considered in its entirety as a matter of immediate impression [see Wool Bureau of Canada Ltd v Registrar of Trade-marks, 40 CPR (2d) 25 (FCTD) at 27-8; Atlantic Promotions Inc v Registrar of Trade-marks, 2 CPR (3d) 183 (FCTD) at 186]. The word “clearly” means “easy to understand, self-evident or plain” [see Drackett Co of Canada Ltd v American Home Products Corp (1968), 55 CPR 29 at 34 (ExCt)].
[52] The purpose of the prohibition in section 12(1)(b) of the Act is to prevent any single trader from monopolizing a term that is clearly descriptive or common to the trade, thereby placing legitimate traders at a disadvantage [Canadian Parking Equipment Ltd v Canada (Registrar of Trade-marks) (1990), 34 CPR (3d) 154 (FCTD)]. The purpose of denying the registration of a deceptively misdescriptive trade-mark is to prevent the public from being misled [see Atlantic Promotions Inc v Registrar of Trade-marks (1984), 2 CPR (3d) 183 (FCTD)]. To be deceptively misdescriptive, a trade-mark must first be found to be descriptive [see Oshawa Group Ltd v Canada (Registrar of Trade Marks) (1980), 46 CPR (2d) 145 at 148 (FCTD)].
[53] In the present case, the evidence shows that the Applicant operates a dental clinic in or proximal to an established area of Calgary known as Mount Royal (see Exhibit I of the Herchen affidavit and Exhibits C and F to the Dedul affidavit). Indeed, under cross-examination, Dr. Caldwell acknowledged the existence of this neighbourhood, as well as the proximity of his dental practice to a shopping centre known as “Mount Royal Village”, shown to be located in or near the Mount Royal area of Calgary.
[54] Although it is true, as the Applicant’s evidence demonstrates, that there are other geographic locations in Canada known as Mount Royal or Mont Royal (see Exhibits D and E to the Dedul affidavit), I do not consider this to be determinative. In my view, the relevant consumer in the present case, would not, upon immediate impression, if ever, associate the Mark with these other areas also known by the same name, given their vast geographical displacement from the Applicant’s dental clinic. Moreover, I agree with the Opponent that the ordinary consumer of the Applicant’s services is someone who lives in Calgary [see Wool Bureau of Canada Ltd v Registrar of Trade-Marks (1978), 40 CPR (2d) 25 re: ordinary everyday purchaser], and would immediately understand that the use of “Mount Royal” in the Mark refers to the established neighbourhood of Mount Royal in the city of Calgary, and not to similarly-named geographic locations on the other side of the country.
[55] As in the OCEAN PARK case above, I find MOUNT ROYAL prima facie descriptive of the place of origin of the Applicant’s services. Moreover, the Mark in its entirety is clearly descriptive of a dental practice located in the Mount Royal area [see also Trader Corporation v Zeuter Development Corporation, 2012 TMOB 191, regarding the trade-mark PARRY SOUND BUY AND SELL]. As in the Décarie Motors case, the evidence in the present proceedings also shows that there are a number of traders who use the term MOUNT ROYAL to describe their respective locales (see for example, Exhibit B to the Ariyanayagam affidavit). Indeed, allowing the registration of the Mark would be akin to granting a monopoly over a clearly descriptive term, thus placing other legitimate traders at a disadvantage.
[56] In the present case, the Applicant has not claimed the benefit of section 12(2) in its application, nor has it made any submissions regarding the possible registrability of the Mark under section 12(2). Even if it had raised this issue, I would likely not have found the evidence sufficient to conclude that the Mark had become distinctive as of the filing date of the application.
[57] In view of the foregoing, this ground of opposition is successful.
Non-distinctiveness Ground of Opposition
[58] The Opponent has pleaded that the Mark is not distinctive within the meaning of section 2 of the Act, in that, it does not actually distinguish and is not adapted to distinguish the Applicant’s services from the services of others, including those of the Opponent.
[59] It is noted that the individual paragraph that pleads the non-distinctiveness ground of opposition does not itself specifically refer to section 12(1)(b) of the Act. However, when that paragraph is read in context with the entire statement of opposition, and in conjunction with the evidence of record, it is apparent that the non-distinctiveness ground of opposition should be understood to encompass the pleading that the Mark is also not distinctive by reason of the fact that it is clearly descriptive of the character or quality and place of origin of the services in association with which it is intended to be used [see Novopharm Ltd v Astrazeneca AB 2002 FCA 387, 21 CPR (4th) 289 (FCA)].
[60] The Applicant’s evidence that the expression MOUNT ROYAL has been used to refer to other locations, including in Quebec, does not assist the Applicant, as this evidence does not support the conclusion that the Mark has been adapted to distinguish the services of the Applicant from the use of the expression “Mount Royal” referring to a location in Calgary. As previously indicated, both the Opponent’s evidence and the Applicant’s evidence demonstrate that the expression “Mount Royal” has been used and was known to Calgarians as designating a particular geographic location in Calgary as of the material date. Furthermore, the Applicant’s evidence does not show that the Mark would distinguish the services of the Applicant from those of others in the Mount Royal area. Accordingly, this ground of opposition is also successful.
Ground of Opposition based on Sections 12(1)(e) and 9(1)(n)(ii) of the Act
[61] The Opponent has pleaded that the Mark is not registrable and is prohibited by reason that it so nearly resembles as to be mistaken for the official marks MOUNT ROYAL UNIVERSITY (no. 0919924) and MOUNT ROYAL CONSERVATORY (no. 0920790).
[62] I have exercised my discretion and checked the register to confirm that each of these official marks are extant [Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)].
[63] In its written argument, the Opponent submits that the Registrar has discretion to review the register and consider all of the marks of Mount Royal University and its predecessors with respect to the registrability of the Mark [citing Concordia University v 649643 Ontario Inc, 2006 CanLII 80381]. In addition, in its written argument, the Opponent concedes that the Mark on its own may not so closely resemble any single official mark of Mount Royal University or its predecessors as to not be registrable on that basis. However, the Opponent submits, taking the family of Mount Royal official marks as a whole, and considering that the Opponent is using the words “Mount Royal” as part of its business name and trade-mark with the permission of Mount Royal University, the Applicant’s Mark in these circumstances so closely resembles one or more of the official marks so as to not be registrable.
[64] The Opponent further submits that even if there is no likelihood of confusion between the Applicant’s Mark and the official marks of Mount Royal University and its predecessor, there is sufficient resemblance that the Applicant’s Mark is unregistrable [citing Canadian Olympic Assn v Olymel (2000), 7 CPR (4th) 309 (FC)]. In this regard, the Opponent submits the first portion of the Mark, being the most important for the purposes of distinction, is identical to the first portion of the official marks in question. Additionally, the Opponent submits, a person of imperfect recollection could at least reasonably conclude that the services of the Applicant were either located at Mount Royal University or were somehow associated with Mount Royal University, and in both cases that would be incorrect. The Opponent submits that the use of the words “centre” and “dental centre” in the Mark further compounds the concern with resemblance, as they imply an operation or facility that could easily be run by a university, as universities are known to teach dentistry and to provide access to services from dental students. The Opponent submits that whether or not Mount Royal University has a faculty of dentistry is not relevant, as what is relevant is that it would be reasonable for members of the public to conclude that a facility named MOUNT ROYAL DENTAL CENTRE could easily be a facility operated by Mount Royal University, when this is in fact not the case.
[65] The test under section 9(1)(n)(ii) is whether a person, on a first impression, knowing the official marks only and having an imperfect recollection of them, would likely be deceived or confused by the Mark. This is not a test of straight comparison, and if, as is the case in the present opposition, the marks are not identical, then there must be consideration of whether the Mark so nearly resembles as to be likely to be mistaken for one or more of the official marks. In assessing the degree of resemblance under section 9(1)(n)(ii), the test is not restricted to visual comparison. Regard may be had to the factors set out in section 6(5)(e) of the Act, namely the degree of resemblance between the marks in appearance, sound or in the ideas suggested by them [see Techniquip Ltd v Canadian Olympic Assn (1998), 80 CPR (3d) 225 at 230 (FCTD), aff’d, 3 CPR (4th) 298 (FCA); Big Sisters Association of Ontario v Big Brothers of Canada (1999), 86 CPR (3d) 504 (FCA); Hope International Development Agency v Aga Khan Foundation Canada (1996), 71 CPR (3d) 407 at 413 (TMOB) at 413].
[66] Even if I were to consider the family of the official marks as submitted by the Opponent, when the marks are compared based on degree of resemblance alone, I am not convinced that the average consumer would be mistaken as between the Mark and the official marks of Mount Royal University. It should also be noted that the Court in Techniquip Limited v Canadian Olympic Association (1999), 3 CPR (4th) 298 (FCA); affg. (1998), 80 CPR (3d) 225 at 234 (FCTD) held that evidence of the state of the trade-marks register and the marketplace can negate the effect of any claimed family of official marks. In the present case, the Opponent’s own evidence suggests widespread use of the words “Mount Royal” by third parties, including in the Calgary area (per Exhibits B and C of the Ariyanayagam affidavit). In addition, the Applicant’s evidence of the state of the register and the marketplace also support such a conclusion (see for example, Exhibits A, B, and C to the Dedul affidavit). As such, the evidence significantly lessens the importance of the opponent’s claim of a family of official marks, as the words MOUNT ROYAL are not unique as a component of trade-marks.
[67] When one considers the marks in their entirety, I find that the resemblance between them in appearance, sound and idea suggested is insufficient to result in the Mark being likely to be mistaken for the official marks of Mount Royal University.
[68] In view of the above, this ground of opposition is rejected.
Disposition
[69] As I have concluded that the grounds of opposition based on sections 38(2)(b)/12(1)(b) and sections 38(2)(d)/2 were successful, pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.
______________________________
Kathryn Barnett
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
Schedule A
|
Application and/or Registration Number |
Trade-mark |
Status |
|
904,010 |
MOUNT ROYAL COLLEGE & DESIGN |
Advertised |
|
Application No. 478,931, TMA271,776 |
MOUNT ROYAL COLLEGE; DESIGN |
Registered |
|
920,790 |
MOUNT ROYAL CONSERVATORY |
Advertised |
|
919,562 |
MOUNT ROYAL PUTS A FACE ON EDUCATION. YOUR FACE |
Advertised |
|
902,181 |
MOUNT ROYAL COUGARS |
Advertised |
|
919,924 |
MOUNT ROYAL UNIVERSITY |
Advertised |
|
912,827 |
MOUNT ROYAL COLLEGE |
Advertised |
|
902,183 |
MOUNT ROYAL COLLEGE COUGARS |
Advertised |
|
920,299 |
MOUNT ROYAL UNIVERSITY 1910 and Design |
Advertised |
|
902,184 |
MOUNT ROYAL COLLEGE CALGARY & DESIGN |
Advertised |
|
908,546 |
THE MOUNT ROYAL COLLEGE CONSERVATORY |
Advertised |
|
908,547 |
THE MOUNT ROYAL COLLEGE CONSERVATORY & DESIGN |
Advertised |
|
904,008 |
COUGARS & DESIGN |
Advertised |
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
___________________________________________________
Hearing Date: 2015-09-03
Appearances
James T. Swanson For the Opponent
Bonnie D. Headley For the Applicant
Agents of Record
Burnet, Duckworth & Palmer LLP For the Opponent
Bennett Jones LLP For
the Applicant