Federal Court refuses trademark containing professional designation

In Continental Teves AG & Co v Canadian Council of Professional Engineers (2013 FC 801), the Federal Court of Canada has refused the application to register ENGINEERING EXCELLENCE IS OUR HERITAGE as a trademark in Canada in association with “brake pads for land vehicles, brake rotors for land vehicles”.

The court’s decision, rendered in the context of an appeal from a decision of the Trademarks Opposition Board issued on January 23 2012, is in keeping with a number of earlier decisions refusing registration of trademarks incorporating the word 'engineer' or 'engineering'. Of note is the fact that “every Canadian province and territory regulates the profession of engineering”, and the use of various terms including 'professional engineer', 'P.Eng', 'engineer' and 'engineering'. This decision also reviews the approach to be taken by the court in evaluating whether a mark is “clearly descriptive” or “deceptively misdescriptive”; in that context, it comments on the value of survey evidence and suggests (without providing any specifics) that there may be alternative means to evidence how words are understood and interpreted by relevant consumers.

As did the Opposition Board, the court refused the application on the basis that the mark had not been shown to be distinctive. In addition, upon reviewing the evidence, the court concluded that an “average Canadian is as likely, if not more likely, to react to the mark by thinking that professional engineers are involved in the production of the wares”. On that basis, it held the mark to be “clearly descriptive of the persons employed in the production of the wares”.

Interestingly, while the Opposition Board came to the same factual conclusion, it concluded that the mark was “deceptively misdescriptive” because the persons involved in the production of the goods were not licensed or registered to provide engineering services in any of the provinces or territories of Canada.

As articulated by the court, the manner in which the issues of “clearly descriptive”, “deceptively misdescriptive” or “distinctiveness” are to be approached is the same manner as a confusion analysis, as recently articulated by the Supreme Court of Canada in its Masterpiece decision. More particularly, the court is to put itself in the position of an average person who is likely to be a consumer of the good or services in question. What must be considered are those characteristics that define the mark (ie, the dominant element of the mark). As the court stated, it is those defining characteristics, not the whole mark, that are to be considered. The court must assess what relevant consumers will think when confronted with the dominant element of the mark in question.

Both the Opposition Board and the court concluded that the word 'engineering' dominates the applied-for mark. Turning then to the evidence, the court lamented the fact that there was none as to “what members of the public in Canada actually think when confronted with the use of words such as ‘engineering’ and the like”. Indeed, the court criticised the evidence put forward by the parties as being “fragments from the internet and the like”, leaving the court “to determine whether the mark at issue is ‘distinctive’ or ‘clearly descriptive’ or ‘deceptively misdescriptive’, with lawyers for the parties adding their rhetoric in an endeavour to pull the decision-maker this way or that”. The court went on to refer to the Masterpiece decision to remark on the limited usefulness of survey evidence to elucidate consumers' perceptions.

While noting that there are “many ways besides expensive surveys in which the court may be informed of actual public reaction”, the court refrained from providing any specific guidance as to preferred means of doing so.

In the present case, the court focused its factual analysis on whether the use of the word 'engineering' “in the mind of the Canadian public pertains to the professional services of those engineers licensed to provide such services” in Canada. Decisions of the court remain split on this factual question, some holding that the use of regulated designations implies licensed engineers are involved in the manufacture of the good, and others finding not.

As noted above, and having in mind the professional monopoly over the use of the designation 'engineering', the Opposition Board had found the use of the mark to be deceptively misdescriptive, as the average Canadian was likely to think that professional Canadian engineers are involved in the production of the goods, which was not the case.

The court took a different view, concluding that there was no evidence that an average consumer would believe that the products were designed or produced by licensed Canadian engineers. However, as the evidence was that foreign engineers were involved in the production of the wares, the court found the mark to be clearly descriptive as a result of the use of the dominant word ENGINEERING which would lead a consumer to believe engineers were involved in the production.

At present, and despite differing case law on the point, it would appear that use of words which are subject to professional monopolies (eg, 'engineer' or 'engineering') as a dominant element of a mark will give rise to the risk that it be found to be either clearly descriptive or deceptively misdescriptive, both of which are fatal to an application.

Laurent Massam, Gowling Lafleur Henderson LLP, Toronto