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College of Dietitians of Alberta v. 3393291 Canada Inc. carrying on business as Canadian School of Natural Nutrition, 2015 FC 449 (T-394-14) (Zinn J.)
April 14, 2015
Neil Kathol and Laura MacFarlane (Field Law LLP) for the Applicant, College of Dietitians of Alberta
David M. Wray and Tim Bourne (Wray & Associates) for the Respondent, Canadian School of Natural Nutrition
The College of Dietitians of Alberta (“College”) applied for an order to invalidate five registered certification marks held by Canadian School of Natural Nutrition (“CSNN”). The certification marks at issue were: 1) R.H.N., 2) R.H.N. Registered Holistic Nutritionist, 3) R.H.N. Holistic Nutritionist, 4) R.H.N. Holistic Nutritional Consultant, and 5) R.H.N. Registered Holistic Nutritional Consultant.
It was found that all five of the certification marks were deceptively misdescriptive at the date of registration and thus, they must be expunged. The use of the word “Registered”, or “R” representing “registered”, in these marks implied either government approval or authority, or that the person who provided the services associated with the marks was part of an organization or whose name could be found on some type of record. In this case, there was no such governmental supervision, no such list or directory and no indication that the users of the certification marks were "registered" with CSNN. As such, the marks were misleading.
Three of the certification marks were clearly descriptive at the date of registration and thus, they must be expunged. “R.H.N. Registered Holistic Nutritionist”, “R.H.N. Holistic Nutritionist” and “R.H.N. Registered Holistic Nutritional Consultant” were clearly descriptive overall because they immediately told consumers what their associated services entailed. The component “R.H.N.”, when found next to the balance of these marks, was easily understood to be an acronym that represented these words. The marks “R.H.N.” and “R.H.N. Holistic Nutritional Consultant”, on the other hand, were found not to be clearly descriptive at the date of registration. “R.H.N.” on its own had no independent meaning. “R.H.N. Holistic Nutritional Consultant” was not clearly descriptive because the component “R.H.N.” and the adjacent text “Holistic Nutritional Consultant” did not correspond to allow a consumer to fully and easily decipher the acronym.
The Court confirmed that there is no rule that if a mark is used as a professional designation, it is automatically clearly descriptive. However, if it is used as a professional designation, it could be found not to be distinctive. In this case, all five of the certification marks were used as professional designations and were found not to be distinctive at the time of the invalidation proceedings. Thus, they must be expunged. The marks were used by graduates to identify themselves rather than to distinguish the services associated with the marks from those of others (i.e. making them distinctive).
Two of the certification marks were not registrable because they violated paragraph 9(1)(d), which prohibited the adoption of any mark which would likely lead to the belief that the associated services have received or are performed under government approval or authority. The finding on this ground of invalidity turned on the relevant date for assessing paragraph 9(1)(d), which the Court confirmed is the date of adoption, not the date of the court's decision. The marks "R.H.N.", "R.H.N. Registered Holistic Nutritionist" and "R.H.N. Holistic Nutritionist" were found not to violate paragraph 9(1)(d) because, as of their dates of adoption in 1995 and 1996, the College had not yet been established. On the other hand, by the time that CSNN adopted the marks "R.H.N. Holistic Nutritional Consultant" and "R.H.N. Registered Holistic Nutritional Consultant" in 2009, the College was already in existence. The existence of the College would likely lead consumers to believe that these latter two marks were subject to governmental supervision.
The Federal Court of Canada expunged all five certification marks from the register.
By: Hung Nguyen, Deeth Williams Wall LLP