Digests

Trade-Marks

Registration

Appeal challenging Registrar of Trade-marks decision refusing to register mark TEACHERS’ on ground mark not registrable, contrary to Trade-marks Act, R.S.C., 1985, c. T-13, s. 12(1)(b)—Applicant administers, manages, invests pension fund for Ontario teachers—Pension fund coming within broader subject matter encompassed by phrase “wares or services” in Act, s. 12(1)(b)—Parliament not intending to exclude various forms of financial funds from application of Act, s. 12(1)(b) as being neither merchandise nor services—Word “character” in Act, s. 12(1)(b) describing distinguishing or prominent feature of wares or services—Given context of pension plan, pension fund itself, services provided by applicant, applicant’s proposed trade-mark TEACHERS’ giving impression proposed trade mark describing prominent characteristic of pension fund for teachers—Therefore, proposed trade-mark caught by Act, s. 12(1)(b) as being clearly descriptive even though not describing administration, management or investment of pension funds in question—Fundamental objective of Act, s. 12(1)(b) to prevent monopoly on use of word common to others providing similar service—Word TEACHERS’ in plural, possessive form constituting distinguishing feature—Providing applicant with monopoly on use of word preventing other pension or financial services targeted to or belonging to teachers within Ontario or in other provinces, territories from using term—Registrar correct to find mark TEACHERS’ unregistrable pursuant to Act, s. 12(1)(b)—Appeal dismissed.

Ontario Teachers’ Pension Plan Board v. Canada (Attorney General) (T-1091-09, 2011 FC 58, Mandamin J., judgment dated January 18, 2011, 23 pp.)