Federal Court upholds constitutional validity of 'prohibited marks' provisions

In Council of Natural Medicine College of Canada v College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia (2013 FC 287), the Federal Court has upheld the constitutional validity of the controversial 'prohibited marks' provisions of the Trademarks Act (RSC 1985, c T-13).

The Council of Natural Medicine College of Canada is a non-profit corporation that provided programmes in traditional Chinese medicine (TCM) and acupuncture. The College of Traditional Chinese Medicine Practitioners is the provincially-delegated governing body for the practice of TCM and acupuncture in the Province of British Columbia. Graduates of the council’s programmes were able to enter into a trademark licence with the council, but they were not licensed to practice TCM by the college. 

In 2005 the council demanded that the college cease and desist infringement of its registered trademark DOCTOR OF TRADITIONAL CHINESE MEDICINE. The college then adopted a number of official marks (a sub-category of prohibited marks) which were published (to become effective) in February 2009. In 2009 the college obtained an order enjoining the council from adopting, using or licensing titles and abbreviations that are protected under the college’s enabling laws. Additionally, the council’s trademarks were invalidated, with all registrations being expunged from the register (College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v Council of Natural Medicine College of Canada (2009 FC 1110)).

The council sought judicial review to set aside the college’s official marks. The council argued the normal grounds in such an application, namely that the college:

• was not a proper public authority so as to qualify for official mark protection; and
• had not properly publically adopted the official marks in question prior to applying for protection. 

The court was not convinced on these points.

Interestingly, the council also argued that sections of the Trademarks Act that prohibit third-party use and registration of a public authority’s official mark are an unconstitutional encroachment into the exclusive jurisdiction of the provinces (Trademarks Act, at ss 9(1) (n) (iii), para 12(1) (e) and s 11; Constitution Act, 1867 (UK), 30 & 31 Vict, c 3, s 92 (13), reprinted in RSC 1985, App II, No 5). The council further argued that official marks, which are strictly creatures of a federal statute (the Trademarks Act) could paralyse the ability of provincial bodies to effectively regulate professions, including TCM.  

In the decision, the court stated that the council’s constitutional arguments “swim against” the dominant tide of constitutional analysis (note 1 at 60-61). The court found that the council had not met its evidentiary burden of showing that the Trademarks Act impaired the provinces’ ability to regulate professionals. The court further commented that the act is a valid exercise of the federal government’s powers to regulate trade and commerce, which had been established by the Supreme Court of Canada more than half a century earlier (Constitution Act, s 91(2)). In a federation as complex as Canada, all governments (federal and provincial) should be able to validly legislate, for their own purposes, in any areas of jurisdictional overlap (Decision, Paragraphs 66-69, citing Canada (Attorney General) v PHS Community Services Society (2011 SCC 44)).

The council also failed on challenges to the act based upon the freedom of expression protections afforded by the Canadian Charter of Rights and Freedoms and the right to a hearing prior to the giving of public notice of an official mark by virtue of the Canadian Bill of Rights (Canadian Charter of Rights and Freedoms, s 2(b), Part 1 of the Constitution Act, 1982, being Schedule B to the Canada Act 1982 (UK), 1982, c 11; Canadian Bill of Rights, SC 1960, c 44).

In summary, the court found that there is nothing in the Trademarks Act that restricts the ability of the provinces to regulate professionals. Further, the act provides a mechanism, via official marks, that protects professional designations from devolving into articles of trade and commerce (Paragraph 88).

Gordon J Zimmerman and Timothy C Bailey, Borden Ladner Gervais LLP, Toronto