Certification mark refused for being extensively recognised in the industry

Canada

In Ministry of Commerce and Industry of the Republic of Cyprus v Les Producteurs Laitiers du Canada (2010 FC 719, June 30 2010), the Federal Court has heard an appeal by the Ministry of Commerce and Industry of the Republic of Cyprus (MCIRC) from a decision of the registrar of trademarks dismissing MCIRC's application to register the certification mark HALLOUMI in association with cheese in Canada. The court upheld MCIRC’s claim that the mark was used as stated in the application as a certification mark. However, the application to register HALLOUMI was refused, as the mark was found to be used extensively in Canada by others to designate a type of cheese, so that the mark had been accepted as an ordinary and good-faith commercial term within the meaning of the industry.

Under Section 30 of the Canadian Trademarks Act, a mark must be used as stated in an application for registration. With respect to Section 23(2) of the act, a certification mark may be adopted and registered only by a person who is not engaged in the manufacturing, sale, leasing or hiring of the goods with which the mark is used. However, Section 23(2) provides that the owner of a certification mark may authorise others to use the mark in association with the goods that meet a defined standard. The use of the mark would be deemed use by the owner.

The evidence originally submitted by MCIRC before the registrar showed use of the mark and the manufacturing standards for making cheese, but did not prove that it had the authority to issue licences for use of the mark in association with cheese. The registrar concluded that the licences had been issued by an association other than MCIRC and, therefore, could not have been deemed use as a certification mark by MCIRC pursuant to Section 23(2) of the act.

On appeal, MCIRC adduced new evidence explaining the internal operations of the Cypriot government demonstrating that it was the authority responsible for monitoring the use of the mark. As a result, the court held that this additional evidence justified allowing MCIRC’s appeal on the ground of compliance with Section 30 of the act.

Paragraph 12 and Section 10 of the act set out the requirements for registrability of a trademark in Canada. Specifically, no person shall adopt a trademark in association with goods where the mark has, by ordinary and good-faith commercial usage, become recognised in Canada as designating a kind, quality, quantity, destination, value, place of origin or date of production of any goods, and no person shall adopt or use a trademark that consists of, or is so nearly resembling as to be likely to be mistaken for, a prohibited mark in association with such goods.

The registrar held that the mark was not registrable under the act as it had, by ordinary and good-faith commercial use, become recognised in Canada as designating a type of cheese. No one should obtain a monopoly over a term or word that has been used extensively in Canada by others to become recognised as designating the kind, quality, value or place of origin of the goods.

On appeal, the court confirmed that the mark, or other marks so nearly resembling the mark as to be likely to be mistaken for it, were used extensively in Canada by others to designate a type of cheese, so that the mark had been accepted as an ordinary and good-faith commercial term within the meaning of the industry. The ground of opposition was maintained.

As only one ground is sufficient to dismiss an application for registration, MCIRC’s application was not reinstated. A notice of appeal to the Federal Court of Appeal was filed July 30 2010.

In conclusion, it was unnecessary to mention in the grounds of opposition whether MCIRC had the authority to issue licences to use the mark. It was sufficient to allege that the application for registration was not in compliance with the act because the mark was not used as stated in the application as a certification mark. In addition, the opponent had to establish whether the term 'halloumi' had, by ordinary and good-faith commercial usage, become extensively recognised in the industry. Effectively, the burden of proof is not quantitative, but rather qualitative.

Janine A MacNeil, Fasken Martineau DuMoulin LLP, Vancouver

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