2011 TMOB 125 (July 25, 2011)
Overview
The Trademarks Opposition Board refused an application to register the certification mark CDA in association with "dental assisting services." In refusing the application, the Opposition Board confirmed previous jurisprudence that professional designations cannot function as certification marks and found that the applied-for trademark CDA, being an abbreviation for the professional designation "Certified Dental Assistant," could not function as a certification mark.
Abstract
The Trademarks Opposition Board (the "Opposition Board") held that the applied-for certification mark CDA ("the mark") was not registrable in association with "dental assisting services," finding that the mark, as a professional designation, could not function as a certification mark and therefore that the mark had not been "used" by the applicant as of the date of first use claimed in its application. The Opposition Board further found the certification mark CDA unregistrable on the basis that it was not distinctive of the applicant's services having regard to the Canadian Dental Association's use of the same acronym in referring to itself.
Case summary
Facts. In July 2005 the Ontario Dental Assistants Association ("the applicant") filed an application to register the certification mark CDA ("the mark") based on use in Canada since at least as early as 1965 in association with "dental assisting services."
The mark was opposed by the Canadian Dental Association ("the opponent") on various grounds, including that:
- the applicant or the applicant's licensee(s) have not used the mark in Canada in association with the services since the alleged date of first use of 1965; and
- the mark is not distinctive having regard to the opponent's use in Canada of the term CDA, being an acronym of Canadian Dental Association since 1912.
The applicant's evidence asserted that since 1961, the applicant had been licensing the mark CDA for use with dental assistant services. The licensed dental assistants were required to satisfactorily demonstrate to the applicant through course work, exams and experience that they met prescribed standards for providing dental assistant services in Ontario. The licensed members are known as "certified dental assistants" and since 1961 have used the mark after their names as a professional designation.
The applicant submitted various documents in support of its claimed "use" of the mark, including, among other things:
- photographs of name bars worn by certified dental assistants that displayed the mark after individuals' names;
- diplomas granted to certified dental assistants; and
- a plaque showing the names of past presidents of the applicant organization since 1961 that displays the mark after the names of individuals.
In response, the opponent provided evidence that since 1902, the opponent had used the acronym CDA to identify itself and promote its services, which include representing the profession of dentistry in Canada and overseeing the best interests of both the public and dentists.
Analysis. The majority of the Opposition Board's analysis focussed on the opponent's ground of opposition based on section 30(b) of the Trademarks Act ("Act"), asserting that the applicant had not "used" the mark as of its claimed date of first use.
In considering whether the mark had been used by the applicant, the Opposition Board noted that the applicant's evidence suggested that the mark was being used as a professional designation rather than as a certification mark as contemplated by the Act. As such, as a preliminary matter, the Opposition Board considered whether a professional designation is capable of functioning as a certification mark. On this issue, the Opposition Board relied primarily on the decision of the Federal Court in Life Underwriters Association of Canada v. Provincial Association of Quebec Life Underwriters (1988), 22 C.P.R. (3d) 1 (F.C.T.D.) ("Life Underwriters"), wherein Justice Dubé found that the alleged trademarks CLU (an abbreviation for "Chartered Life Underwriter) and ALA (an abbreviation for "Assureur-vie agréé") were not proper certification marks, noting as follows:
Just as the words "lawyer", "notary", "physician", "engineer" and so on cannot be registered as certification marks, so the title "chartered life underwriter" cannot be regarded as a certification mark. In my view, the name of a profession itself cannot be used as a standard, a definite norm, a distinguishing mark that can be placed on wares or services.
The Opposition Board noted that Life Underwriters had been followed in subsequent decisions of the Trademarks Opposition Board. For example, in Canadian Council of Professional Engineers v. Alberta Institute of Power Engineers (2008), 71 C.P.R. (4th) 37, the Opposition Board found that the trademark PE could not function as a certification mark because the evidence showed that it was an abbreviation for "Power Engineer," which is a professional title. Similarly, in Groupe Conseil Parisella, Vincelli Associes Inc. v. CPSA Sales Institute (2003), 31 C.P.R. (4th) 308, the Opposition Board found that the acronym PVA was not registrable since it was "not used in association with services, but [was] instead used as a professional title that appears after the name of an individual on business cards, letterheads or certificates of accreditation."
The applicant argued that Life Underwriters was no longer good law and that it had been improperly applied in subsequent Opposition Board decisions. However, after reviewing the jurisprudence, the Opposition Board concluded that Life Underwriters remains good law. Accordingly, the Opposition Board found that the mark, being an abbreviation for the professional designation "Certified Dental Assistant," could not function as a certification mark.
The Opposition Board went on to consider whether, even if the mark could function as a certification mark, the applicant had shown use of the mark as of its claimed date of first use in 1965. The Opposition Board concluded that the applicant had not established "use" pursuant to section 4(2) of the Act as of the claimed date of first use. In reaching this conclusion, the Opposition Board found that use of the mark after an individual's name on printed matter would not qualify as use of the mark pursuant to section 4(2), reasoning as follows:
The name bars set out in (a) above could qualify as use of the Mark when worn by certified dental assistants in carrying out their dental assisting services. However, this would be use of the Mark to designate the dental assistants as having met the criteria to call themselves CDAs rather than distinguishing the services provide by these individuals. In other words, this would qualify as use of the Mark as a professional designation which I have already found cannot function as a certification mark.
As a result of its findings that the mark was a professional designation that cannot function as a certification mark, and that "use" of the mark as of the claimed date of first use had not been established in any event, the Opposition Board allowed the opponent's section 30(b) ground of opposition.
The Opposition Board went on to consider the opponent's ground of opposition based on lack of distinctiveness having regard to the opponent's use of the acronym CDA to refer to itself and its wares and services. Upon reviewing the opponent's evidence, the Opposition Board concluded that the opponent had met its burden of establishing that the acronym CDA had become sufficiently known as referring to the opponent so as to negate the ability of the mark to distinguish the services of the applicant. As a result, the Opposition Board allowed this ground of opposition as well.
Having found that the Opponent was successful on both of the grounds of opposition discussed above, the Opposition Board refused the application.
Conclusion
This case confirms previous jurisprudence that a professional designation cannot function as a certification mark. As a result, as the law currently stands, professional designations do not appear to be registrable as certification marks.
Daniel S. Davies, Ottawa
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.