JURISDICTION REPORT: CANADA
PROFESSIONAL DESIGNATIONS: CLARITY AT LAST
Victoria Carrington Shapiro Cohen
Te Federal Court has confirmed that professional designations may function as certification marks, provided the professional designation meets the criteria for certification marks set out in the Trade-marks Act. In Ontario Dental Assistants Association v Canadian Dental Association, 2013 FC266, the court considered an appeal of an Opposition Board decision rejecting an application for registration of the certification mark ‘CDA’, filed by the Ontario Dental Assistants Association (ODAA).
ODAA used the mark to identify dental assisting services of an identified standard, ie, performed by ODAA members in good standing who had passed the requisite certification examinations approved by ODAA. Te application, which was based on use in Canada since 1965, was successfully opposed by the Canadian Dental Association (CDA), which used the same acronym to identify itself and its services. Te Opposition Board allowed the opposition on the basis that:
i. A professional designation cannot function as a certification mark, and therefore
ii. Tere could have been no use as a certification mark of the acronym CDA from the date of first use claimed, and
iii. Te acronym CDA is non-distinctive due to its concurrent use by the CDA.
Te court examined the criteria for certification marks in the act: lack of clear descriptiveness, distinctiveness, absence of a likelihood of confusion and proper use. It then departed from the position established by earlier Opposition Board cases (including Life Underwriters Association of Canada v Provincial Association of Quebec Life Underwriters (1992) 40 CPR (3d) 449) by stating: “Tere is nothing in the act that precludes a valid certification mark from being registered for a professional designation, if that mark meets the criteria in the act, and to the extent the respondent relies upon previous case law to support an opposite finding, in my opinion such reliance is incorrect.”
Although the court ultimately dismissed the appeal because ODAA was unable to show its mark was distinctive and had been properly used as claimed in its application, the issue of professional designations functioning as valid certification marks has now been clarified.
Interlocutory injunctions remain elusive creatures … depending on where you are! Te Saskatchewan Court of Appeal (SCA) maintained the typically high Canadian standard of availability of injunctive relief in trademark cases when it set aside the interlocutory injunction granted by the Court of
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“THE COURT ULTIMATELY DISMISSED THE APPEAL BECAUSE ODAA WAS UNABLE TO SHOW ITS MARK WAS DISTINCTIVE AND HAD BEEN PROPERLY USED AS CLAIMED IN ITS APPLICATION.”
Queen’s Bench. In Wildman v Kulyk, 2013 SKCA 55 (CanLII), the SCA applied the longstanding test for interlocutory injunctions:
i. Te strength of the plaintiff’s case (a serious issue to be tried); ii. Te meaningful risk of irreparable harm if injunction not granted; and iii. Whether the balance of convenience favours granting the injunction.
Te court held the plaintiff failed the first branch of the above test when she was unable to meet the requirements for her passing off claim against the defendant. A successful passing off claim must establish goodwill, deception of the public due to misrepresentation and actual or potential damage to the plaintiff.
Since the plaintiff’s own evidence showed that, aside from the formalities involved in starting her business (opening bank accounts, arranging insurance, etc), she had difficulty launching it, there was clearly insufficient goodwill to support her claim for passing off and thus no serious issue to be tried.
Te contrasting decision of the Québec Superior Court in Solutions Abilis Inc v Group Alithis Inc, 2013 QCCS 1179 reflects an approach that differs from Canada’s common law provinces. In Québec, the availability of injunctive relief is prescribed by the Civil Code and while the test applied by the courts is similar to the common law test established by the Supreme Court of Canada, the overriding concern is whether the plaintiff’s rights are clear, doubtful or non-existent.
If the rights are clear, then injunctive relief should be granted if it is considered necessary in order to avoid serious or irreparable injury to the plaintiff. It is only if the plaintiff’s rights are doubtful that the court need assess the balance of convenience. In Solutions Abilis, once the court found a clear likelihood of confusion between the parties’ marks, it presumed loss of goodwill and clientele and granted the injunction without difficulty.
Victoria Carrington is a partner/managing principal at Shapiro Cohen. She can be contacted at:
vcarrington@shapirocohen.com
World Intellectual Property Review September/October 2013 163
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