TRADE MARKS |
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Canadian Council of Professional Engineers v. APA--The Engineered Wood Assn.
T-1565-98
O'Keefe J.
27/6/00
31 pp.
Appeal from decision of Opposition Board of Registrar of Trade-marks rejecting oppositions raised by Canadian Council of Professional Engineers (CCPE) to registration of two proposed trade-marks of APA--The Engineered Wood Association: "APA--The Engineered Wood Association" (Application number 753,455) and "The Engineered Wood Association" (Application number 753,456)--Applications based on proposed use in Canada in association with laminated wood products and wood included products used for structural purposes in building construction--CCPE claimed marks not registrable on several grounds including ownership of CCPE of various official trade-marks including words "engineer", "engineering"--Hearing officer of Opposition Board rejecting all grounds of opposition raised by CCPE to APA's proposed trade-marks--Found CCPE alleging inter alia applied-for trade-marks suggested involvement by registered professional engineers, which APA is not, thereby allegedly lead to confusion, misleading--Decision of Registrar should not be set aside lightly considering expertise in matter--Decisions of Registrar, whether of fact, law, discretion, within area of expertise, to be reviewed on standard of reasonableness simpliciter--Registrar erred in holding appellant's third ground of opposition, that of non-distinctiveness, merely repetitive of second ground--Question of distinctiveness of proposed marks ought to have been considered independently--Proposed trade-mark "APA-The Engineered Wood Association" distinctive, can function so as to distinguish wares of respondent from those of others--Proposed mark "The Engineered Wood Association" not distinctive--Claim by appellant proposed mark deceptively misdescriptive of persons engaged in production of goods, services without merit--Proposed trade-mark not "The Wood Engineer's Association"--Registrar must not unduly limit inquiry upon opposition proceedings--Not reasonable for Registrar to allow unregistrable mark to be registered, merely because narrow grounds for non-registrability under Trade-marks Act, s. 12(1)(b) advanced by opponent not successful--In order to offend Act, s. 9(1)(n)(iii) so as to be unregistrable under s. 12(1)(e), proposed mark must either be identical to offical mark or so nearly resemble it so as to be likely to be mistaken for it--Words "consists of" to be interpreted to mean "identical to" as held by Registrar--Interpretation advanced by Registrar correct--Appeal allowed in part--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 9 (as am. by S.C. 1990, c. 14, s. 8; 1993, c. 15, s. 58; c. 44, ss. 226, 236(1)(c), (d); 1994, c. 47, s. 191), 12 (as am. by S.C. 1990, c. 20, s. 81; 1993, c. 15, s. 59; 1994, c. 47, s. 193).