TRADE MARKS |
Registration |
Canadian Council of Professional Engineers v. John Brooks Co.
T-595-02
2004 FC 586, O'Reilly J.
21/4/04
14 pp.
Appeal pursuant to Trade-marks Act (Act), s. 56 from Trade-marks Opposition Board's dismissal of opposition to application for registration of trade-mark "Brooks Brooks Spray Engineering"--Concern over use of "engineering" in proposed trade-mark--Whether proposed trade-mark unregistrable because either clearly descriptive, or deceptively misdescriptive, of respondent's services or personnel-- Business cannot register trade-mark clearly descriptive or deceptively misdescriptive of character or quality of services or persons providing them--In separate proceedings, respondent sought to register words "Spray Engineering"-- Board found proposed trade-mark either clearly descriptive or deceptively misdescriptive on grounds users of wares would likely assume engineers involved in production--Here, Board concluded addition of words "Brooks Brooks" changed things, and as whole, proposed mark not clearly descriptive or deceptively misdescriptive of character of respondent's services--Board incorrect based on fresh evidence including information relating to regulation of term "engineering"-- Proposed trade-mark deceptively misdescriptive of respondent's services and persons providing them--However, evidence not showing proposed trade-mark clearly descriptive since respondent employs relatively few engineers--Situation distinguished from registered uses of "engineering" with other words cited by respondent in which little chance consumers would be misled into thinking professional engineers associated with business--"Spray engineering" connoting range of sophisticated technical services related to fluid handling and distribution and therefore, connection with kinds of services one might expect professional engineers to provide--Test for whether objectionable part of proposed trade-mark forming significant part of whole thus causing it to remain deceptively misdescriptive: whether deceptively misdescriptive words "so dominate the applied for trade mark as a whole such that . . . the trade mark would thereby be precluded from registration": (Chocosuisse Union des Fabricants-Suisses de Chocolate v. Hiram Walker & Sons Ltd. (1983), 77 C.P.R. (2d) 246 (T.M.O.B.), citing Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103 (F.C.T.D.))--As words "spray engineering" clearly dominating proposed trade-mark, thus, "Brooks Brooks Spray Engineering" cannot be registered--Appeal allowed--Trade-marks, R.S.C., 1985, c. T-13, s. 56.