IN THE MATTER OF AN OPPOSITION
by The Canadian Council of Professional
Engineers to application No. 614,932 for the
trade-mark P.ENG & Design filed by The
Canadian Society for Professional Engineers
On September 8, 1988, the applicant, The Canadian Society for Professional Engineers, filed an application to register the trade-mark P.ENG & Design (illustrated below) based on use in Canada since July of 1982. The application covers the following services:
services of a non-profit association of professional engineers for its members, specifically, providing career counselling to professional engineers; lawyer referral services for professional engineers on matters relating to employment, intellectual property and business; advising professional engineers on financial planning; arranging group insurance plans for professional engineers; promoting the interests of professional engineers before government.
The application as filed contained a disclaimer to the word P.ENG and the color red in the maple leaf design was claimed as part of the mark. The application was advertised for opposition purposes on July 12, 1989.
The opponent, The Canadian Council of Professional Engineers, filed a statement of opposition on August 8, 1989, a copy of which was forwarded to the applicant on October 24, 1989. The first ground of opposition is that the applicant's application does not comply with the provisions of Section 30(i) of the Trade-marks Act because the opponent owns a number of official marks including P. ENG. and PROFESSIONAL ENGINEER. The second ground of opposition is that the applicant’s application does not comply with the provisions of Section 30(b) of the Act because the applicant did not use the applied for mark since July of 1982 as claimed, or at all.
The third ground of opposition is that the applied for trade-mark is the combination of the disclaimed word P.ENG and a red maple leaf and therefore contravenes Section 12(1)(b) of the Act. The opponent alleges that the applicant's mark is either clearly descriptive or deceptively misdescriptive of "...providing various professional services for Engineers in Canada." The fourth ground is that the applied for mark is not distinctive because it is unregistrable for the reasons relied on in support of the third ground.
The fifth ground of opposition is that the applied for trade-mark is not registrable pursuant to Sections 9(1)(n)(iii) and 12(1)(e) of the Act because it consists of, or so nearly resembles as to be likely to be mistaken for, the official marks of the opponent including P.ENG for which the Registrar gave public notice of their adoption and use on June 21, 1989. The sixth ground is that the applied for trade-mark is not registrable pursuant to Sections 9(1)(d) and 12(1)(e) because the applicant's use of the word "P.eng" falsely indicates to the public that it has government approval or authority.
The seventh ground of opposition is that the applied for trade-mark is not registrable pursuant to Sections 10 and 12(1)(e) of the Act because the word “P.eng” which has, by ordinary and 'bona fide' commercial usage, become recognized as designating the kind, quality and place of origin of the applied for services as being those provided by a particular class of person registered and operating pursuant to relevant provincial statutes as engineers. The eighth ground is that the applied for mark is not registrable pursuant to Section 12(1)(b) of the Act because it is deceptively misdescriptive of the conditions of or the persons employed in the production of the applicant’s services or of their place of origin.
The applicant filed and served a counter statement. The opponent's evidence consists of three statutory declarations of John Koh. The applicant's evidence consists of the affidavit of A. Aziz Akhtar, a member and director of the applicant. Mr. Akhtar was cross-examined on his affidavit and the transcript of that cross-examination forms part of the record of this proceeding. Both parties filed a written argument and an oral hearing was conducted at which only the opponent was represented.
The opponent's first ground does not raise a proper ground of opposition. The mere fact that public notice has been given of the adoption and use of a number of official marks does not preclude the applicant from making the statement required by Section 30(i) of the Act. In any event, the publications of the opponent's official marks all occurred on June 21, 1989, that date being after the applicant's filing date. Furthermore, the opponent did not even allege that the applicant was aware of the opponent's marks. Thus, the first ground is unsuccessful.
As for the second ground of opposition, the onus or legal burden is on the applicant to show that it has complied with the provisions of Section 30(b) of the Act. However, there is an evidential burden on the opponent to prove its supporting allegations of fact. Since the opponent did not file any evidence directed to proving those allegations, the second ground is also unsuccessful.
Considering the third and eighth grounds together, Section 12(1)(b) of the Act reads as follows:
12. (1) Subject to section 13, a trademark is registrable
if it is not....
(b) whether depicted, written or sounded, either
clearly descriptive or deceptively misdescriptive
in the English or French language of the
character or quality of the wares or services in
association with which it is used or proposed to
be used or of the conditions of or the persons
employed in their production or of their place of
origin.... (emphasis added)
The material time for considering the circumstances respecting the issue arising pursuant to Section 12(1)(b) of the Act is the date of my decision: see the decision in Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers (1992), 41 C.P.R.(3d) 243 (F.C.A.). The issue is to be determined from the point of view of an everyday user of the wares. Furthermore, the trade-mark in question must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression: see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R.(2d) 25 at 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R.(3d) 183 at 186.
The applicant has effectively conceded that the word P.ENG is clearly descriptive of its applied for services since it disclaimed that word in its application. In other words, the word P.ENG clearly describes that the applied for services are intended for engineers. The applicant contends that the word P.ENG is only suggestive but that even if it is held to be clearly descriptive, the mark as a whole is not clearly descriptive due to the design component of the mark, namely the red maple leaf. Although there may be some merit to the applicant’s argument when the mark is viewed, Section 12(1)(b) of the Act also applies to the mark as sounded. Since the most likely way that the applicant’s mark would be pronounced is by sounding the word P.ENG, I consider that it offends Section 12(1)(b): see, for example, the recent unreported opposition decision in Arthur v. Auto Mart Magazine Limited (S.N. 670,379; December 8, 1995). The ground of opposition based on Section 12(1)(b) of the Act is therefore successful.
It appears that the ground based on Section 12(1)(b) should also be successful on the basis that the applicant’s mark (particularly when sounded) clearly describes the persons employed in the production of the applied for services. The applicant’s mark, when sounded, is the word P.ENG which is a known abbreviation for the title “professional engineer.” In paragraph four of his affidavit, Mr. Akhtar states that the applicant is managed exclusively by registered professional engineers. Thus, it would appear that the applicant’s mark clearly describes the persons who provide the applicant’s services. The ground based on Section 12(1)(b) of the Act is therefore successful on this basis as well.
The fourth ground of opposition is essentially the same as the third and eighth grounds except that the issue of non-distinctiveness is decided as of the filing of the opposition. However, my conclusions above are equally applicable as of that earlier date and thus the fourth ground is also successful.
The material time for considering the circumstances respecting the fifth ground of opposition would appear to be the date of my decision: see the decisions of the Federal Court of Appeal in Allied Corporation v. Canadian Olympic Association (1989), 28 C.P.R.(3d) 161 (F.C.A.); affg. (1987), 16 C.P.R.(3d) 80 (F.C.T.D.); revg. (1985), 6 C.P.R.(3d) 500 (T.M.O.B.) and Olympus Optical Company Limited v. Canadian Olympic Association (1991), 38 C.P.R.(3d) 1 (F.C.A.); affg. (1990), 31 C.P.R.(3d) 479; revg. (1987), 16 C.P.R.(3d) 455 (T.M.O.B.). The opponent is not required to evidence use and adoption of each official mark relied on: see page 166 of the Federal Court of Appeal's reasons in the Allied case noted above. Finally, the test to be applied is one of straight comparison of the marks in question apart from any marketplace considerations such as the wares, services or trades involved: see page 166 of the Allied decision and page 65 of the Trial Division's decision in Canadian Olympic Association v. Konica Canada Inc. (1991), 39 C.P.R.(3d) 400 (F.C.A.); revg. on other grounds (1990), 30 C.P.R.(3d) 60 (F.C.T.D.). Contrary to the applicant's submission, the test for resemblance is not restricted to a visual comparison of the marks: see the opposition decision in WWF-World Wide Fund for Nature v. 676166 Ontario Ltd. (1992), 44 C.P.R.(3d) 563 at 567.
In its written argument, the applicant argued that the opponent’s official marks are not official marks and that the opponent was precluded from relying on them. The applicant submitted that the opponent’s official marks are professional designations and are used by people (namely, engineers) and not by entities in association with wares or services. Although the opponent’s official marks are professional designations, that does not preclude their use for wares or services as well. As noted, the opponent is not obliged to evidence the particular uses it has made of its marks.
The applicant also argued that since the opponent is not one of the provincial bodies charged with regulating engineers, it cannot purport to regulate the use of such designations as P.ENG or PROFESSIONAL ENGINEER and therefore cannot claim such designations as its official marks for wares or services. I agree that it would appear that the opponent does not have any such direct regulatory authority. However, that does not preclude it from
adopting and using such words as P.ENG and PROFESSIONAL ENGINEER as official marks because it is a public authority and therefore has an absolute discretion to do so.
Effectively, the publication of an official mark operates as an outright prohibition from the date of publication on and is not dependent on a showing of use, adoption or public authority status: see the opposition decision in Association of Professional Engineers of Ontario v. Parametric Technology Corp. (1995), 60 C.P.R.(3d) 269 at 276-278. In other words, a published Section 9 official mark is, in the absence of contrary evidence, accorded a status equivalent to a trade-mark registration and, in some respects, greater than a registration since it is not open to attack pursuant to Sections 45 and 57 of the Act.
In the present case, the applicant has not adduced any evidence to cast doubt on any material aspect of the publications of the opponent's official marks. The applicant did, however, point to the opponent's own evidence which shows that professional engineering is regulated by various provincial and territorial statutes and that those statutes make no reference to the opponent. Exhibit D to the Akhtar affidavit suggests that the opponent is a professional advisory body and therefore could not be in a position to use any of its official marks for engineering services. Even if that is true, however, the publications of the opponent's various official marks are not restricted to any particular wares or services.
At the oral hearing, the opponent’s agent also sought to answer the applicant’s argument by submitting that the various provincial engineering associations had authorized the opponent to seek protection for the official marks relied on in this case and that the opponent then licensed the provincial associations to use those official marks. However, that submission is speculative since the opponent did not evidence any such arrangement.
As stated in Section 9(1)(n)(iii) of the Act, the applicable test is whether or not the applicant's mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant's mark identical to, or almost the same as, the official mark? In the present case, the most relevant of the opponent's official marks is P.ENG and the applicant's mark is not identical to it. However, it is, in my view, almost the same as the official mark since the red maple leaf background of the applicant’s mark possesses minimal inherent distinctiveness and, when the marks are sounded, they are identical. Thus, the fifth ground is also successful. The remaining grounds therefore need not be considered.
In view of the above, I refuse the applicant's application.
DATED AT HULL, QUEBEC, THIS 7TH DAY OF FEBRUARY 1996.
David J. Martin,
Member,
Trade Marks Opposition Board.