2011 FC 58 (notice of appeal filed on February 17, 2011)
Overview
The Federal Court confirmed the decision of the Registrar of Trademarks to refuse the application to register the trademark TEACHERS' for use in association with services relating to the "administration of a pension plan, management and investment of a pension fund for teachers in Ontario" as being clearly descriptive of the intrinsic character of the services, contrary to section 12(1)(b) of the Trademarks Act.
Abstract
The Federal Court confirmed the decision of the Registrar of Trademarks ("Registrar") to refuse the application to register the trademark TEACHERS' for use in association with services relating to the "administration of a pension plan, management and investment of a pension fund for teachers in Ontario" as being clearly descriptive of the intrinsic character of the services, contrary to section12(1)(b) of the Trademarks Act ("Act"). Proceeding on a de novo basis, the Court agreed with the applicant that TEACHERS' does not clearly describe the services provided, the conditions of or the persons employed in their production, or of their place of origin, as teachers are merely the intended users of the services. However, the Court noted that section 12(1)(b) of the Act refers to "wares or services" and went on to assess the descriptiveness of the trademark in the broader context of a pension fund. Ultimately, Justice Mandamin held that the word TEACHERS' is a distinguishing feature of the pension plan because it is a pension plan exclusively for teachers, and thus clearly describes a prominent characteristic of the wares or services provided.
Case summary
Facts. On June 20, 2002, the applicant, the Ontario Teachers' Pension Plan Board, filed an application to register the trademark TEACHERS' for proposed use in association with services described as "administration of a pension plan, management and investment of a pension fund for teachers in Ontario." On June 29, 2003, the Examiner indicated that the trademark may not be registrable as being either clearly descriptive or deceptively misdescriptive contrary to section 12(1)(b) of the Act. On May 8, 2009, after several exchanges of correspondence over a six-year period, the Registrar refused the application pursuant to sections 37(1)(b) and 12(1)(b) of the Act.
On July 23, 2009, the applicant appealed from that decision to the Federal Court and produced two affidavits as new evidence. The first affidavit included press releases and annual reports of the applicant showing use of the trademark applied for. The second affidavit included several examples of trademarks on the Register that are arguably descriptive of the group targeted, but not of the services offered. The second affidavit also included examples of trademarks appearing on the Register in association with pension fund and pension plan services as well as benefit and retirement plans.
Analysis. On the preliminary issue of standard of review, Justice Mandamin referred to case law establishing the principle that where substantial new relevant evidence as to the issue of confusion is adduced on appeal, the Court is entitled to proceed on a de novo basis. The Court held that this approach is also appropriate for the issue of descriptiveness. As he found that the additional evidence was substantial and would have materially affected the Registrar's decision, Justice Mandamin proceeded to review this matter on the whole of the evidence without deference to the Registrar's decision.
The applicant's main argument was that to offend section 12(1)(b) of the Act, the trademark must clearly describe a particular character of the services or the persons employed or engaged in the provision of such services, but not the persons who may avail themselves of these services.
The Court accepted these arguments and agreed that TEACHERS' does not clearly describe the services provided, or the conditions of or the persons employed in their production, or of their place of origin. However, the Court noted that section 12(1)(b) of the Act refers to "wares or services" and went on to assess the descriptiveness of the trademark in the broader context of a pension fund.
The Court indicated that a trademark that clearly describes a prominent characteristic of the wares or services will come within the prohibition of section 12(1)(b) of the Act. The decision maker is not limited to the evidence and can rely on common sense. The decision that the trademark is clearly descriptive is to be based on initial impression. Justice Mandamin was of the view that when one thinks of a pension fund, one is just as likely, or more likely, to think of the pensioner or prospective pensioner than the administrator or the manager of the pension fund. As such, the first impression created by the trademark TEACHERS' is that it describes a prominent characteristic of a pension fund exclusively for teachers and is thus prohibited by section 12(1)(b) of the Act as being clearly descriptive, even though it does not the describe the administration, management or investment of the pension funds in question.
The Court concluded that the trademark TEACHERS' in its plural and possessive form is a distinguishing feature, and therefore the character, of this pension plan because it is a pension plan exclusively for teachers and it clearly describes a prominent characteristic of the wares and services provided. Providing the applicant with a monopoly on the use of this word would prevent other pension or financial services targeted to or belonging to teachers within Ontario or in other provinces and territories from using the term.
Conclusion
The appeal was dismissed and the decision of the Registrar to refuse the application to register TEACHERS' was maintained. The applicant filed its notice of appeal with the Federal Court of Appeal on February 17, 2011.
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