Archived — Practice Notice: Professional Designations and their initials — Paragraph 12(1)(b) of the trade-marks Act, Publication Date: 2007-06-13
Professional Designations and their initials — Paragraph 12(1)(b) of the Trade-marks Act
Publication Date: 2007-06-13
Note: This practice notice is intended to provide guidance on current Trademarks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.
This notice is intended to clarify the Trademarks Office practice with respect to applying the provisions of paragraph 12(1)(b) of the Trade-marks Act (hereinafter referred to as the "Act") to professional designations.
When confronted with a mark that appears to be the title of a profession, research is conducted to determine whether it is a professional designation. Where research discloses that the trademark applied for does consist of a professional designation, examiners are to apply the first impression test in light of the applicant's wares and/or services Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, (1978) 40 C.P.R. (2d) 25; Mitel Corp. v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202].
If it is considered that the prospective consumer, when faced with the applied for trademark would immediately, as a matter of first impression, assume that the wares or services are produced by a professional from that designation, the mark will be found to be clearly descriptive of the persons employed in the production of the wares and services and unregistrable pursuant to the provisions of paragraph 12(1)(b) of the Act [Life Underwriters Assn. of Canada v. Provincial Assn. of Québec Life Underwriters (1988 FCTD 1); Lubrication Engineers, Inc. v. Canadian Council of Professional Engineers (1992 FCA 243) ].
The Trademarks Office considers that the addition of initials to the title of a profession will not serve to render a mark registrable where these are clearly descriptive and known to be only initials representing the titles [Life Underwriters Assn supra].
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