LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 182
Date of Decision: 2010-11-02
IN THE MATTER OF AN OPPOSITION by The Society of Professional Accountants of Canada to application No. 1,201,516 for the trade-mark PA in the name of The Institute of Certified Professional Accountants of Alberta
The Record
[1] On February 10, 2004, The Institute of Certified Professional Accountants of Alberta (“Alberta Institute” or “Institute”) filed an application to register the certification mark PA, based on use of the mark since on or before September 30, 1999, in association with
third party accounting services.
The application sets out the standard met by individuals performing the service, which standard consists of a number of educational and work related requirements, as shown below:
The use of the certification mark is intended to indicate that the services in association with which it is used are performed by individuals having the following defined standard: (A) Candidates must have successfully completed the following courses at a post secondary institution: Level I Financial Accounting 1 Micro Economics Business law Financial Management Level II Financial Accounting 2 Management Accounting 1 Statistics Computerized Information Systems Level III Financial Accounting 3 Accounting Information Systems Management Accounting 2 Macro Economics Level IV Public Speaking Organizational Behaviour Advanced Financial Accounting Auditing Taxation Level V Accreditation Upon completion of the above program, candidates must successfully complete the mandatory accreditation examinations in: Advanced Accounting Advanced Auditing Advanced Taxation. (B) Candidates must have practical experience that has developed the necessary body of knowledge and skills required in Accounting, Auditing, Taxation, Finance and Management being two years of appropriate full-time work in accounting and related disciplines within the last five years prior to certification. OR (C) Candidates not meeting all educational requirements may write a comprehensive entrance examination, providing that the candidate has a minimum of five years of appropriate full-time work experience in accounting and related disciplines within the last eight years prior to application for certification.
[2] The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated September 20, 2006 and opposed by The Society of Professional Accountants of Canada (“SPAC”) on October 3, 2006. The Registrar forwarded a copy of the statement of opposition to the applicant on October 17, 2006, as required by s.38(5) of the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant responded by filing and serving a counter statement generally denying the allegations in the statement of opposition.
[3] The opponent’s evidence consists of the affidavit of William O. Nichols. The applicant’s evidence consists of the affidavit of Laura Waters-Taverner. The opponent’s evidence in reply consists of a further affidavit of William O. Nichols. The opponent submitted a transcript of the cross-examination of Ms. Waters-Taverner, together with Exhibit 1 thereto, and answers to undertakings given at the cross-examination. Both parties filed a written submission and both parties were ably represented at an oral hearing held on September 28, 2010.
Statement of Opposition
[4] The first and second grounds of opposition, based on s.30 of the Trade-marks Act, allege that the applicant (i) has not used the mark in association with the services since the date alleged or at any other time, and (ii) could not have been satisfied that it was entitled to use the mark because the applicant was aware of the opponent’s certification mark.
[5] The third ground, pursuant to s.12(1)(d) of the Act, alleges that the applied for mark PA is not registrable because it is confusing with the opponent’s registered certification mark R.P.A. for use in association with accounting services.
[6] The fourth ground, based on s.16, alleges that the applicant is not entitled to register the applied for mark because, at the date of its first use on September 30, 1999, it was confusing with the opponent’s certification mark which had been previously used.
The fifth ground, pursuant to s.2, alleges that the applied for mark does not, and cannot, actually distinguish the services described in the application from the services of the opponent.
Opponent’s Evidence
William O. Nichols
[7] Mr. Nichols identifies himself as President of the opponent SPAC. The opponent is the owner of the certification marks R.P.A. and A.P.A. used in association with accounting services which meet the following standard:
The services are performed by a class of persons, namely those persons who have successfully completed courses given by the The Society of Professional Accountants of Canada and, who have been, or may be approved by The Society of Professional Accountants of Canada.
[8] The mark R.P.A. has been in use since at least as early as 1989. A federal charter has been granted to SPAC as a corporation by letters patent pursuant to Part 2 of the Canada Corporation Act. The opponent ensures professional competence of its members by means of on-going education and the setting of qualifying standards. Persons who successfully complete courses are licensed to use the mark R.P.A. when offering accounting services to the public. The mark A.P.A. is licensed to those members who have completed 7 years in public practice and have been members of SPAC with R.P.A. designation for 10 years. According to Mr. Nichols, “the Certification marks R.P.A. and A.P.A. have developed a reputation and goodwill in association with the accounting services provided by SPAC’s accredited members and has[sic] become recognized in Canada as a badge of excellence in the area of accounting services.” SPAC recognizes approved prerequisite courses offered by many universities and offers courses at the University of Toronto School of Continuing Studies. Persons designated as R.P.A. are eligible guarantors for Canadian passports and for the Ontario Vital Statistics document application for birth certificates. SPAC has been recognized as an educational institution pursuant to Sections 118.5 and 118.6 of the Income Tax Act. Licensees of the mark R.P.A. will feature the mark on letterhead in corresponding with clients receiving accounting services.
Applicant’s Evidence
Laura Waters-Taverner
[9] Ms. Waters-Taverner identifies herself as a Director of the Alberta Institute. The Institute was incorporated in September 30, 1999 under the Societies Act of Alberta. Ms. Waters-Taverner was formerly the President of the applicant’s predecessor organization namely, the Society of Professional Accountants of Alberta (“Predecessor Society,” registered on September 24, 1997). The Alberta Institute’s mission is to promote the general development of the accounting business and rendering the conduct of such business in a way that justifies the confidence of the public and employers. The designation PA was authorized for use by members of the Predecessor Society on August 1, 1997. On October 27, 1999, all existing members of the Predecessor Society were authorized to be members of the Alberta Institute and were issued new membership certificates.
[10] The Canadian Passport Office recognizes those holding PA designation as an eligible guarantor, as are professional accountants with the designations APA, CA, GCA, CMA, and RPA. The Alberta Institute’s membership across Canada, that is, individuals certified by the Alberta Institute to use the trade-mark PA, has steadily risen from 23 members in 1997 to 251 members in 2006. Not surprisingly, generally about half of the members, on an annual basis, are located in the province of Alberta. Authorized members use the mark PA in communicating with clients and potential clients and on business cards.
[11] By virtue of her positions with the Alberta Institute and Predecessor Society, Ms. Waters-Taverner is aware “of all contacts initiated by the public and prospective members . . .” She is unaware of “any inquiry from any member of the public where the intent of that person was to contact the Opponent.”
[12] In August of 1999 the opponent requested Predecessor Society to cease using the phrase Society of Professional Accountants, which Predecessor Society accommodated by incorporating the present applicant.
[13] The Registered Public Accountant’s Association of Alberta is the owner of the mark shown below, registered in March 1996.
A variation of the mark, consisting of the words REGISTERED PUBLIC ACCOUNTANTS appearing below the oval design feature which encloses the stylized letters RPA, is found at the owner’s website: see Exhibit N to the Waters-Taverner affidavit. Further, the end of the webpage reads as follows:
Regional Public Accounting Association (RPAA) Services: Newfoundland, Quebec, PEI, Nova Scotia, Ontario, Alberta, Saskatchewan, Manitoba, British Columbia, New Brunswick, and all Canadian Cities
[14] A third party, the Registered Public Accountant’s Association of Alberta Atlantic (“RPAAA”) website (as of January 10, 2007) uses the stylized RPA oval logo, and the mark RPA, as shown below:
transcript of cross-examination of Laura Waters-Taverner
[15] As explained on cross-examination, prospective members of the Alberta Institute submit an application to the Institute, together with educational transcripts and work experience. The Institute then determines if the person applying meets its defined standard. If the standard is met, then the person is granted a license to use the mark PA. Predecessor Society licensed the mark PA from the time of its incorporation until it became inactive, that is until about September 30, 1999 at which time the Institute began to licence use of the mark PA. The same defined standards were applied by Predecessor Society and the Institute. There was no formal written agreement transferring the rights of the mark PA from Predecessor Society to the Institute. Rather, the Board of Directors of Predecessor Society met on September 30, 1999 and assigned “any and all interest that we have in members, affiliations, designations, PA . . . and any other assets . . .” to the Institute. The Board of Directors of Predecessor Society constituted the Board of Directors of the Institute.
[16] Ms. Waters-Taverner has also been President of The Institute of Professional Accountants of Saskatchewan Inc. (“Saskatchewan Institute”) since its inception on December 5, 2000. The Alberta Institute licences through the Saskatchewan Institute, that is, if a person in Saskatchewan wanted to receive PA designation, then the person would still apply to Alberta Institute and be required to meet Alberta Institute’s defined standard. The person would then receive Alberta Institute’s license under the letterhead of an operational group whose trade-name is The Institute of Professional Accountants (which is owned by Alberta Institute). Other provincial societies affiliated with the Alberta Institute are The Certified Professional Accountants of Ontario, of British Columbia, and of Manitoba. Another organization affiliated with the Institute is The Canadian Institute of Professional Accountants (“Canadian Institute”), which is a federally incorporated corporation. An individual can apply to the Canadian Institute to obtain PA designation.
[17] In responding to undertakings given at Ms. Waters-Taverner’s cross-examination, the applicant Alberta Institute provided copies of the written agreement regarding use of the PA designation between itself and the Canadian Institute. It is a very brief document, however, it sets out that (i) the applicant Alberta Institute is to perform all administration functions of the Canadian Institute including membership applications and member services, (ii) the Canadian Institute’s members “will be allowed to use the designation PA, which at all times will be regulated and controlled by” the applicant Alberta Institute. In responding to undertakings Alberta Institute also provided copies of analogous agreements between the applicant and its affiliates in Manitoba, Saskatchewan, British Columbia and Ontario.
[18] An undertaking to provide “the individual provincial organization’s written agreement with The Canadian Institute of Professional Accountants regarding the use of the PA certification mark” was answered as follows:
There are no such agreements between individual provincial organizations (other than Alberta) and The Canadian Institute of Professional Accountants as that is not the manner in which the use of the PA mark is controlled.
Opponent’s Reply Evidence
[19] For the most part, the opponent’s reply evidence further explains past conflicts between the parties herein concerning the use of trade-names, as discussed in the applicant’s evidence, and the use of the marks in issue herein. I do not find that the historical perspective presented in the reply evidence is particularly relevant to the issues to be decided in this proceeding.
Legal Onus and Evidential Burden
[20] The legal onus is on the applicant to show that the application does not contravene the provisions of the Trade-marks Act as alleged by the opponent in the statement of opposition. The presence of a legal onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant. However, there is also, in accordance with the usual rules of evidence, an evidential burden on the opponent to prove the facts inherent in its allegations pleaded in the statement of opposition: see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293 at 298. The presence of an evidential burden on the opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist. Of course, the opponent may rely on any evidence filed by the applicant to meet the opponent’s evidential burden.
First and Second Grounds of Opposition
[21] The first ground of opposition, based on s.30 of the Act, alleges that the applicant Alberta Institute has not used the mark PA in association with the specified services since the date alleged, that is, since September 30, 1999. In order to meet its evidential burden in respect of this ground, the opponent relies on (a) a copy of a corporate search (Exhibit G of Mr. Nichols’ evidence in chief) showing that the applicant was registered on September 30, 1999, and (b) letters (Exhibit G of Ms. Waters-Taverner’s affidavit) dated September 30, 1999 from the applicant to individuals advising them that (i) their application for membership has been approved, (ii) they may use the designation PA. The opponent questions how the applicant can claim use of the mark PA on the same day that licensees were forwarded letters advising them of the applicant’s permission to use the PA designation. In this regard, s.23 of the Trade-marks Act does not permit the owner of a certification mark to use the mark, but rather deems use of the mark by licensees as use by the owner.
[22] If there was no further background information, I would agree with opponent that (i) it has met its relatively light evidential burden with respect to the first ground of opposition and (ii) the evidence submitted by the applicant fails to meet the applicant’s legal onus to establish use of the mark PA by licensees as of the claimed date of first use. However, the opponent’s argument is premised on its submission that the applicant cannot rely on use of the mark PA by Predecessor Society because, according to the opponent, Predecessor Society failed to effect a valid transfer of ownership of the mark PA to the applicant on September 30, 1999. I disagree with the opponent on this premise. In my view, ownership of the mark PA was validly transferred to the present applicant Alberta Society from Predecessor Society as described by Ms. Waters-Taverner in her affidavit and on cross-examination and as supported by documents filed pursuant to undertakings. There is no formal written document evidencing the transfer, however, a formal written document is not required to validly transfer trade-mark ownership. The first ground of opposition is therefore rejected.
[23] The second ground of opposition is rejected as the applicant’s mere knowledge of the opponent’s mark is insufficient to support the allegation that the applicant could not have been satisfied that it was entitled to use the applied for mark. Such an allegation is established by showing that the applicant has acted in bad faith or fraudulently or is in non-compliance with a Federal statute.
Main Issue
[24] The main issue with respect to the remaining grounds of opposition is whether the applied for mark PA is confusing with either of the opponent’s marks R.P.A. and A.P.A. The material dates to assess the issue of confusion are (i) the date of decision, with respect to the third ground of opposition alleging non-registrability: see Andres Wines Ltd. and E & J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424 (F.C.A.); (ii) the claimed date of first use of the applied for mark, in this case September 30, 1999, with respect to the second ground of opposition alleging non-entitlement: see Section 16(1) of the Trade-marks Act; (iii) the date of opposition, in this case October 3, 2006, in respect of the issue of non-distinctiveness: see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R.(3d) 418 (F.C.T.D.).
[25] The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of Section 6(2) of the Act, shown below, between the applied for mark PA and the opponent's marks R.P.A. and A.P.A.:
6(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services . . . associated with those trade-marks are manufactured . . . by the same person, whether or not the wares or services . . are of the same general class.
Thus, s.6(2) does not concern the confusion of the marks themselves, but confusion of wares or services from one source as being from another source. In the instant case, the question posed by s.6(2) is whether there would be confusion of accounting services provided by the applicant’s members as being accounting services provided by the opponent’s members.
Test for Confusion
[26] The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are set out in Section 6(5) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. This list is not exhaustive; all relevant factors are to be considered. All factors do not necessarily have equal weight. The weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R.(3d) 308 (F.C.T.D.).
Consideration of Section 6(5) Factors
[27] The applied for mark PA possesses little inherent distinctiveness, in relation to the services specified in the subject application, because it is an acronym derived from the words “professional accountant.” The mark is therefore highly suggestive of the type of person employed to perform the applicant’s services. I infer from the applicant’s evidence that the applied for mark PA has gained some reputation in Canada at the later material dates, however the evidence is insufficient to make a more definitive statement about its acquired distinctiveness. The applicant’s evidence indicates that the applied for mark was first used on or about August 1, 1997 although the application does not claim use of the mark until September 30, 1999. I am prepared to infer from the evidence of record that the applied for mark PA had at least a minimal reputation at the earliest material date. Similarly, the opponent’s marks R.P.A. and A.P.A. possess little inherent distinctiveness owing to the P.A. component of the marks. I infer from the opponent’s evidence that the mark R.P.A. had gained some reputation in Canada at all material dates, although the evidence is insufficient to make a more definitive statement about its acquired distinctiveness.
[28] I further note that the applicant’s evidence concerning use of the mark RPA by RPAAA indicates that the acquired distinctiveness of the opponent’s mark may have been compromised by third party use. However, it is difficult to come to any definite conclusion regarding the extent of possible dilution given the paucity of the evidence of third party use. It is equally difficult to come to any definite conclusion regarding the acquired distinctiveness of the opponent’s mark A.P.A. However, I am prepared to infer from a fair reading of the evidence as a whole that the applicant’s mark A.P.A. acquired at least a minimal reputation at all material times. Thus, in my view, the evidence of record is insufficient for me to come to any conclusion other than finding that the first factor, which is a combination of the inherent distinctiveness and acquired distinctiveness of the marks in issue, favours neither party.
[29] The length of time that the marks in issue have been in use favours the opponent as it has been using its mark R.P.A. since 1989 while the applicant’s earliest use of its mark PA occurs in mid 1997.
[30] For the purposes of this proceeding, I find that the parties’ services and trades are essentially the same, that is, each party is concerned with ensuring that high quality accounting services are available to businesses and individuals who require such services. These factors are therefore unfavourable to the applicant in the sense that it would be advantageous to the applicant to differentiate its services and trade from those of the opponent.
[31] The parties’ marks resemble each other to a fair extent in all respects as the applied for mark PA is comprised of the suffix portion of the opponent’s marks R.P.A. and A.P.A. In this regard, I do not consider that the period symbols separating the letters of the opponent’s marks are significant distinguishing features. In other words, for the purposes of this proceeding, the mark RPA is merely a slight variation of the mark R.P.A., that is, a difference without a distinction.
[32] I am aware of the principle of trade-marks law enunciated in General Motors v. Bellows (1949) 10 C.P.R. 101 at 115-116 (S.C.C.) that some types of marks, such as the opponent’s marks in the instant case, are not entitled to a wide ambit of protection:
. . . where a party has reached inside the common trade vocabulary for a word mark and seeks to prevent competitors from doing the same thing, the range of protection to be given him should be more limited than in the case of an invented or unique or non-descriptive word
. . . where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolize the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered.
No doubt there is a public interest against confusion of these marks, but on the other hand there is a like interest in the freedom of the individual trader in ordinary trade practices and in particular in using the main stock of the language.
(emphasis added)
[33] I am also aware of the principle enunciated in Conde Nast Publications Inc. v. Union Des Editions Modernes (1979) 26 C.P.R.(2d) 183 at 188 (F.C.T.D.) that the first portion of a mark is the most important for purposes of distinguishing between marks. Thus, in the instant case, the first letters of the opponent’s marks, that is, R and A, serve to distinguish the opponent’s marks from the applied for mark. However, when the first portion of a mark is fairly non-distinctive, its importance diminishes: see Vancouver Sushiman Ltd. v. Sushiboy Foods Co. (4th) 22 C.P.R. (4th) 107 (TMOB).
[34] I have also noted as a relevant surrounding circumstance that the applicant has not been contacted by any member of the public where the intent of the person was to contact the opponent.
[35] Considering the s.6(5) factors and surrounding circumstance as discussed above, and considering the jurisprudence respecting “weak” marks, it is apparent that neither party has submitted sufficient probative evidence to establish a persuasive case. However, the legal onus is on the applicant to show that, on a balance of probabilities, there is no reasonable likelihood of confusion between the applied for mark PA and the opponent’s marks R.P.A. and A.P.A at the relevant material dates. I find that the balance of probabilities for and against the issue of confusion is evenly balanced between the parties at all material times and accordingly I must find against the applicant and refuse the application.
[36] It is apparent that I have given consideration to the opponent’s mark A.P.A. even though it was not pleaded in the statement of opposition. I have done so given the guidance in AstraZeneca Canada Inc. v. Novopharm Ltd. 83 C.P.R. (4th) 241 (F.C.A.) to interpret the statement of opposition in the light of the evidence of record. The outcome
of this proceeding would have been the same had I not taken the opponent’s mark A.P.A. into consideration.
Disposition
[37] In view of the foregoing, the subject application is refused. This decision
has been made pursuant to a delegation of authority under s.63(3) of the Trade-marks Act.
____________________________
Myer Herzig
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office