Monday, May 23, 2011

Showdown Between Dental Associations at the Trademark Opposition Board

When I read the summary of this TMOB case I just knew I had to write about it. This is a perfect example of the absurdity that can result from time to time in the IP world.  

In a decision dated January 24th 2011, the trademark opposition board ruled in favour of the Canadian Dental Hygienists’ Association in their effort to foil the Canadian Dental Associations attempt to register a trademark for “NATIONAL DENTAL HEALTH MONTH/MOIS NATIONAL DE LA SANTÉ DENTAIRE”.

The Board member ruled that the mark was invalid on two grounds: 

First, The CDHA (opponent) was successful in convincing the board that the CDA’s (applicant) marks was confusing with their own: “NATIONAL DENTAL HYGIENE WEEK/SEMAINE NATIONALE DE L’HYGIÈNE DENTAIRE”.  It was found that the marks were very similar in appearance and that the nature of the trade or service undertaken by the parties was- though not identical- quite similar.  That coupled with the Board’s conclusion that CDA did not provide any evidence of use of the mark was sufficient to cause confusion in the eyes of the average consumer. 

Second, the Board found that the mark was descriptive of the service and therefore not eligible for registration under the trademark act. The CDA disclaimed all the individual words in the mark claiming benefit of protection on the whole phrase only.  The Board found that the phrase in English and its French translation were both descriptive in the respective language.  

The CDA argued for a narrow interpretation of section 12(1)(b) TMA which says that a mark is may not be registered when:

(b) Whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language (emphasis added).

They argued that the mark is only invalid if it is descriptive or deceptively misdescriptive in English OR French and not when it is descriptive in both languages at the same time.  

In the past, the TMOB has interpreted this section to mean that a mark composed of words in both English and French can escape the fate of invalidity even though the individual words may be purely descriptive in either language. For example, in Coca-Cola Co. v. Cliffstar Corp (1993), 49 C.P.R. (3d) 358 (T.M.O.B.), the Board allowed the registration of “LE JUICE” even though each word on its own would not be eligible for protection nor would the mark if both words were in either English or French (“THE JUICE” or “LE JUS”).
In this case however, the Board member found that argument unconvincing. Including a mere translation of a descriptive phrase does not make the mark as a whole any less descriptive. The English version is descriptive in English and the French version is descriptive in French. Allowing the mark in this case would be a misinterpretation of parliament’s intentions in enacting the measure. 

Ironically, the Board member mentioned in passing that it was not her place in the course of this matter to comment on the descriptive nature of the opponents mark.  In claiming that the CDA’s mark is confusing with their own and then claiming that the mark is descriptive they essentially labeled their own mark as descriptive.  One can’t help but laugh at this instance of pot and kettle.

Though I completely agree with the ruling of the Board in this case, I think it represents somewhat of a low point in the world of trademarks.  After all, these are two non-profit entities whose common mission is the promotion of dental health and hygiene in Canada.  The fact that these two bodies are registering and opposing trademarks of this nature is kind of sad.  The fact that tax payer dollars are going into settling these matters is both sad and frustrating. 

But hey, at least internet is affordab…forget it.

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