Professional designations cannot be registered as certification marks

Canada
In Canadian Dental Assn v Ontario Dental Assistants Assn ([2011] TMOB No 5125, 94 CPR (4th) 357), the Canadian Trademarks Opposition Board has followed a 1988 Federal Court decision holding that professional designations cannot be registered as certification marks.
 
Applicant Ontario Dental Assistants Association, an Ontario non-profit corporation which acts as the certifying body and membership association for dental assistants, filed an application to register the certification mark CDA based on use in Canada since as early as 1965 in association with “dental assisting services”. Canadian Dental Association, a federal not-for-profit corporation which was founded in 1902, opposed the application on various grounds including, but not limited to, the following:
  • the applicant’s licensees have not used the mark in Canada in association with the relevant services and standards since the alleged date of first use;
  • the applicant had co-existed in Canada for 35 years with various other dental associations, including the opponent, which also used the term 'CDA', so the mark was not distinctive of the applicant’s services; and
  • the mark was descriptive, since it is an established acronym in Canada for 'certified dental assistant'.
With respect to the first two grounds of opposition, the board found that the applicant could not have licensed the mark for use as a certification mark since it was a professional designation, and the mark was not distinctive of the applicant’s services or standards covered by the application. Having refused the application on two grounds, the board did not consider the remaining grounds of opposition.

In deciding whether the applicant’s licensees had used the mark as a certification mark pursuant to Section 2 of the Trademarks Act, the board first considered whether a professional designation could function as a certification mark. Relying on Life Underwriters Assn of Canada v Provincial Assn of Quebec Life Underwriters ((1988) 22 CPR (3d) 1 (FCTD)), the board found that the term 'CDA' served “only to distinguish the individuals using the mark as being certified dental assistants, rather than functioning to distinguish the services offered by these individuals”. The board also relied on Canadian Council of Professional Engineers v Alberta Institute of Power Engineers ((2008) 71 CPR (4th) 37 (TMOB)), which found that an abbreviation of a professional title ('PE' for 'power engineer') could not be used as a certification mark. Since the term 'CDA' was simply an abbreviation of 'certified dental assistants', a professional designation, and since it was used in association with a person, not in association with goods or services of a defined standard, the term 'CDA' could not function as a certification mark.

The board was not persuaded by the applicant’s arguments that:
  • if the registrar was to reject all professional designations on a prima facie basis, this would render it easier for unqualified persons to fraudulently use them; or
  • professional designations fall within the definition of a 'certification mark' under Section 2(c) of the act, which states that a certification mark is used to distinguish goods or services that are of a defined standard with respect to "the class of persons by whom the wares have been produced or the services performed".
The board also found that, even if a professional designation could function as a certification mark, the applicant’s mark had not been used by the licensees in association with the services of a defined standard pursuant to Section 4(2) of the act. Evidence that the CDA mark was displayed in diplomas, plaques, newspaper articles and publications, wherein the mark was placed after the name of the certified individual and displayed on name bars worn by certified dental assistants that displayed the mark after the individuals’ names when they were performing their services, was not sufficient. The board reasoned that use of the mark after an individual’s name on printed matter would not qualify as Section 4(2) use, and that, even if use of the mark on name bars would amount to Section 4(2) use, such use was as a professional designation which, as the board had already held, could not function as a certification mark.

Despite relying on a number of older cases, the board may have gone too far in its comments regarding why a professional designation cannot be registered as a certification mark. In its decision, the board’s principal argument was that 'CDA' cannot be regarded as a certification mark because it “serves only to distinguish the individuals using the mark as being certified dental assistants rather than functioning to distinguish the services offered by these individuals”. It seems rather obvious, however, that certification as a CDA would imply that those who are certified provide dental assistant services. Indeed, the applied for services of the certification mark were for “dental assistant services”, and as was argued by the applicant, the definition of a 'certification mark' under Section 2 of the act allows a certification mark to be used to certify a class of person by whom the services are performed.

The board may have also been too quick to conclude that the mark applied for was an abbreviation of a professional designation and, therefore, a professional designation. Decisions concerning the registrability of acronyms are relevant to this issue. The case law is clear that an acronym can be clearly descriptive, and thus not registrable, if the acronym is well known as referring to a single idea (eg, NAFTA BOND FUND for use in association with a fund that takes advantage of the North American Free Trade Agreement: Bank of Montreal v Midland Walwyn Capital Inc ((1998), 86 CPR (3d) 555)). On the other hand, merely because an acronym is derived from a descriptive mark does not necessarily make it descriptive if the acronym is capable of various possible meanings in the mind of the general public (eg, ITV for use in association with television broadcasting services where the initials ITV could be interpreted as standing for independent television, interactive television, instructional television or internet television: ITV Technologies Inc v WIC Television Ltd (2003 FC 1056)). Applying this case law to the present case, it would have been more reasonable for the board to have found that CDA is capable of various possible meanings in the mind of the general public, and that the mark should not have been considered a professional designation (assuming that it was not already commonly adopted by others not certified by the applicant to perform the same services).

Even if the board was incorrect in finding CDA to be a professional designation and unregistrable as a certification mark, it would still have been able to deny registration on other grounds. For example, registration could have been denied on the basis that the mark was not distinctive of the applicant’s services and standards given third-party uses of the same mark even for somewhat different purposes.

This case reinforces the principle that descriptive marks should be avoided, but the decision may create unnecessary doubt as to when an acronym is truly clearly descriptive.

Gordon Zimmerrman and Brandon Evenson, Borden Ladner Gervais LLP, Toronto

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