2011 TMOB 7 (January 24, 2011)
Overview
The Trademarks Opposition Board refused an application by the Canadian Dental Association for the mark NATIONAL DENTAL HEALTH MONTH/MOIS NATIONAL DE LA SANTÉ DENTAIRE, finding the mark to be confusing with marks registered by the opponent, the Canadian Dental Hygienists' Association, and also finding the mark to be clearly descriptive. The Trademarks Opposition Board clarified that the descriptiveness of a mark is to be assessed from the perspective of a bilingual consumer.
Abstract
The Trademarks Opposition Board ("Opposition Board") found that the applicant's trademark NATIONAL DENTAL HEALTH MONTH/MOIS NATIONAL DE LA SANTÉ DENTAIRE was confusing with the opponent's marks NATIONAL DENTAL HYGIENE WEEK/SEMAINE NATIONALE DE L'HYGIÈNE DENTAIRE and NATIONAL DENTAL HYGIENE WEEK/SEMAINE NATIONALE DE L'HYGIÈNE DENTAIRE & DESIGN and found that the applied-for mark was clearly descriptive. In making the latter finding, the Opposition Board clarified that descriptiveness is to be considered from the perspective of bilingual consumers, as well as unilingual English and French speaking consumers.
Case summary
Facts. In May 2001, the applicant filed an application to register the trademark NATIONAL DENTAL HEALTH MONTH/MOIS NATIONAL DE LA SANTÉ DENTAIRE on the basis of use in Canada since 1976 in association with the following services:
Promoting good dental health for all Canadians, including regular dental care to prevent and treat oral diseases, good oral hygiene and well-balanced diet; and promoting the dental profession within Canada by various means, namely, newspapers, magazines, periodicals, pamphlets, promotional materials, radio, television, the Internet, symposiums and sponsored events.
The opponent opposed the registration on various grounds, including that the applied-for mark was confusing with the opponent's registered marks NATIONAL DENTAL HYGIENE WEEK/SEMAINE NATIONALE DE L'HYGIÈNE DENTAIRE, NATIONAL DENTAL HYGIENE WEEK/SEMAINE NATIONALE DE L'HYGIÈNE DENTAIRE & DESIGN, and NATIONAL DENTAL HYGIENISTS WEEK/LA SEMAINE NATIONALE DES HYGIÉNISTES DENTAIRE, contrary to section 12(1)(d) of the Trademarks Act ("Act"), and that the applied-for mark was clearly descriptive of the services with which it was used, contrary to section 12(1)(b) of the Act.
Neither party adduced significant evidence as to the use of its marks.
The opponent's evidence established that, while dentists and dental hygienists belong to distinct professions and offer different services, the two professions are related. In particular, it was established that 85% of dental hygienists work in traditional dentists' private practices in Ontario, that the majority of dental hygienists, by regulation, must be supervised, directed or ordered by dentists, and that the patients who receive dental hygienists' services in a dental office are the dentists' patients.
Analysis. The opponent's ground of opposition based on section 12(1)(d) of the Act was successful. The Opposition Board found that the channels of trade through which both parties offer their services overlap. The Opposition Board also concluded that the applicant's mark and the opponent's marks had a high degree of resemblance and expressed similar or related ideas, given that the average consumer may not recognize a difference between the terms "dental hygiene" and "dental health." These findings, in combination with the applicant's failure to adduce evidence of use, led the Opposition Board to conclude that the applicant had not met its burden of showing that there would be no reasonable likelihood of confusion between its trademark and those of the opponent.
With respect to the descriptiveness objection, the Opposition Board considered the perspective from which a mark is to be considered in assessing whether it is clearly descriptive or deceptively misdescriptive. In particular, the Opposition Board noted that section 12(1)(b) precludes registration of a mark that is "...either clearly descriptive or deceptively misdescriptive in the English or French language." According to the Opposition Board, if "or" was interpreted in its exclusive sense, section 12(1)(b) would prevent registration of marks which are descriptive in either English or French, without considering the perspective of the average bilingual consumer. In considering the interpretation of this section, the Opposition Board noted that it had previously decided that section 12(1)(b) "does not preclude the registration of a trademark comprised of a combination of French and English words that are individually descriptive of the wares" (at para. 36). For example, the Opposition Board noted that the mark LE JUICE was held not to be descriptive despite the presence of a descriptive English and descriptive French word (see Coca-Cola v. Cliffstar Corp. (1993), 49 C.P.R. (3d) 358).
However, the Opposition Board distinguished the present case from the previous Opposition Board decisions on the basis that the applicant did not combine two descriptive words to create an invented word, but rather, the applicant's mark consisted of a clearly descriptive English mark joined with its clearly descriptive French equivalent to produce a mark that was clearly descriptive in both languages to a bilingual consumer. In further considering whether the word "or" in section 12(1)(b) was to be considered in its exclusive sense, the Opposition Board noted that the assessment under section 12(1)(b) should be done from the perspective of the average consumer, and cited jurisprudence of the Supreme Court of Canada and Federal Court standing for the proposition that the mythical consumer is assumed to be bilingual. The Opposition Board therefore concluded that Parliament must have intended the word "or" to be inclusive, that is, to mean and/or. On this basis, the Opposition Board concluded that the applicant's mark was clearly descriptive in the English and/or French language, and the opponent's ground of opposition under section 12(1)(b) of the Act was successful.
In addition, the opponent was successful in its distinctiveness ground of opposition and was unsuccessful in its section 30(b) ground of opposition that the mark DENTAL HEALTH MONTH had previously been used by various third parties. Since the opponent was successful on three grounds, the Opposition Board did not consider the remaining grounds of opposition.
Conclusion
This decision clarifies that the descriptiveness of a mark is to be assessed from the perspective of a bilingual consumer, and that section 12(1)(b) precludes the registration of marks that are clearly descriptive or deceptively misdescriptive in English and/or French.
In Canadian Dental Hygienists' Association/L'Association canadienne des hygiénistes dentaires v. Canadian Dental Association/ L'Association Dentaire Canadienne, 2011 TMOB 8, a second decision released on the same day, the Opposition Board applied a near-identical analysis to refuse the Canadian Dental Association's application for the mark NATIONAL ORAL HEALTH MONTH/MOIS NATIONAL DE LA SANTÉ BUCCODENTAIRE.
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