Mark dominated by deceptive misdescription is unregistrable

Canada

In Canadian Council of Professional Engineers v John Brooks Company Limited, the Federal Court of Canada has reversed the Trademarks Opposition Board's decision to reject the plaintiff's opposition to the registration of BROOKS BROOKS SPRAY ENGINEERING as a word and design mark.

The Canadian Council of Professional Engineers (CCPE) opposed John Brooks Company Limited's application to register BROOKS BROOKS SPRAY ENGINEERING as a word and design mark on the basis, among other things, that it contained the word 'engineering'. CCPE was of the view that the public interest and prevailing law required that the word 'engineering' be used exclusively by professional engineers, which John Brooks was not.

The Trademarks Opposition Board rejected CCPE's opposition. It found that the repetition of the name Brooks rendered the trademark neither clearly descriptive nor deceptively misdescriptive of the character of John Brooks's services. In particular, the board found no evidence that Brooks was primarily merely a surname and it was unlikely that a consumer would think BROOKS BROOKS was a person's name. Further, the board found no evidence that John Brooks did not employ engineers. CCPE appealed to the Federal Court of Canada.

The Federal Court allowed the appeal and held that the mark BROOKS BROOKS SPRAY ENGINEERING was deceptively misdescriptive despite the repetition of the name Brooks. The court took into account fresh evidence filed by CCPE indicating that (i) Brooks is a common surname, and (ii) it is customary for engineering firms to use a combination of surnames in their trade names. The court stated that the proper test to be applied was "whether the deceptively misdescriptive words so dominate the ... trademark as a whole ... that ... [it] would thereby be precluded from registration". The court concluded that the phrase 'spray engineering' (i) clearly dominated the proposed trademark, and (ii) was deceptively misdescriptive of John Brooks's services as it was neither a registered nor licensed professional engineering firm. Accordingly, the mark BROOKS BROOKS SPRAY ENGINEERING was not registrable.

Glen A Bloom and Samantha J Gervais, Osler Hoskin & Harcourt LLP, Ottawa

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