Professional Designations and their initials — Paragraph 12(1)(b) of the trade-marks Act
Publication Date: 2010-10-26
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 or portion of a mark that appears to be the title of a profession, research is conducted to determine whether the mark or portion of the mark is a professional designation. Where research discloses that the mark or portion of the mark applied for does consist of a professional designation, examiners are to apply the first impression test in light of the applicant's goods and/or services [see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, (1978) 40 C.P.R. (2d) 25 and 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, conclude that the goods or services are produced by a professional from that designation, the mark will be found to be clearly descriptive or deceptively misdescriptive of the persons employed in the production of the goods and services and unregistrable pursuant to the provisions of paragraph 12(1)(b) of the Act [see Life Underwriters Assn. of Canada v. Provincial Assn. of Québec Life Underwriters (1988) 22 C.P.R. (3rd) 1 and Lubrication Engineers, Inc. v. Canadian Council of Professional Engineers (1992) 41C.P.R. (3d) 243].
Moreover, the Office considers that the mere addition of an abbreviation, acronym or initials of the professional designation contained in the trademark will not render the trademark registrable (see Life Underwriters Assn., supra; College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada (2009) 80 C.P.R. (4tH0 265]
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.
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