T-2815-83
Canadian Council of Professional Engineers
(Appellant)
v.
Lubrication Engineers, Inc. (Respondent)
Trial Division, Muldoon J.—Ottawa, September
12 and October 12, 1984.
Trade marks — Appeal from decision rejecting opposition
to register trade mark "Lubrication Engineers" — Respondent
disclaiming right to exclusive use of word "Lubrication" —
Mark registered in U.S.A. — Whether word "Engineers"
registrable — Decision in Association of Professional Engi
neers of the Province of Ontario v. Registrar of TradeMarks,
[1959] Ex.C.R. 354 applied with respect to s. 12(I)(b) of Act:
proposed mark clearly descriptive or deceptively misdescrip-
tive of character or quality of respondent's wares — Further
ground of opposition based on provincial and territorial enact
ments — Registration prohibited if mark contrary to public
order (s. 14(1)(c)) or likely to lead to belief wares had govern
mental approval (s. 9(1)(d)) — Provincial statutes governing
professions laws of public order — Governance of professions
matter of provincial legislative jurisdiction — Provincial and
territorial legislatures prohibiting use of word "engineer"
when latter arrogated by unlicensed or unregistered person in
manner likely to lead to belief person authorized to bear title
"Engineer" falling under provincial and territorial prohibi
tion, thereby falling under s. 9(1)(d) prohibition — "Lead to
belief' including official and colloquial designations — No
conflict between federal and provincial provisions upon which
to invoke paramountcy doctrine — Proposed mark not regis-
trable Appeal allowed — Trade Marks Act, R.S.C. 1970, c.
T-10, ss. 9(1)(d), 12(1)(b), 14, 37(9) (as enacted by S.C.
1976-77, c. 28, s. 44) The Engineering Profession Act,
C.C.S.M., c. E-120, ss. 28, 29 — Engineers Act, R.S.Q. 1964,
c. 262, s. 27 (as am. by S.Q. 1973, c. 60, s. 22) — Constitution
Act, 1867, 30 & 31 Vict., c. 3 (U.K.) [R.S.C. 1970, Appendix
II, No. 5] (as am. by Canada Act 1982, 1982, c. 11 (U.K.),
Schedule to the Constitution Act, 1982, Item 1), s. 92(15).
This is an appeal from the decision of a hearing officer
(hereinafter referred to as the registrar) appointed pursuant to
subsection 37(9) of the Trade Marks Act. By that decision, the
registrar rejected the appellant's opposition to the respondent's
application to register the trade mark "Lubrication Engineers".
The mark, registered in the United States, would be used in
association with greases, graphites and oils. The respondent has
disclaimed the right to the exclusive use of the word "Lubrica-
tion" on the basis that it is not registrable. The issue is whether
the word "Engineers" is registrable. The appellant relies on the
Exchequer Court decision in Association of Professional Engi
neers of the Province of Ontario v. Registrar of TradeMarks,
where the Court upheld the Association's opposition to the
registration of the mark "Finishing Engineer" for use as the
title of a periodical published in the United States. The Court
found that the words "Finishing Engineer" were not distinctive
of the applicant's publication but constituted a clear description
of its contents and were therefore not registrable. The registrar
in the instant case rejected the appellant's opposition based on
paragraph 12(1)(b) of the Act because he found that this case
was distinguishable from the "Finishing Engineer" case. In
view of that finding, he considered it unnecessary to examine
the respondent's claim based on section 14. The ground of
opposition based on paragraph 9(1)(d) was also rejected.
Held, the appeal should be allowed.
The appellant has adduced ample evidence upon which the
Court can form the same conclusion as did the Exchequer
Court in the "Finishing Engineer" case. The proposed trade
mark is clearly descriptive or deceptively misdescriptive of the
character or the quality of the wares of the respondent and
thereby violates paragraph 12(1)(b) of the Act.
There exists a more important ground for the refusal of
registration. This further ground, formulated in both para
graphs 14(1)(c) and 9(1)(d) of the Act, relates to the various
provincial and territorial enactments governing the engineering
profession. Under paragraph 14(1)(c), a foreign trade mark
cannot be registered if it is contrary to public order or of such a
nature as to deceive the public. Section 14 refers consonantly to
the matters of public order listed in section 9, a provision of
general application. Under paragraph 9(1)(d), a trade mark
cannot be registered if it is likely to lead to the belief that the
wares have received, inter alia, governmental approval or
authority.
Provincial statutes governing professions are clearly laws of
public order. The governance of professions is a matter of
provincial legislative jurisdiction in Canada. Both territorial
legislatures and all ten provincial legislatures have enacted
within their sovereign sphere of constitutional competence that
no person (which includes a corporation) shall arrogate to
himself any word, abbreviation, name or designation which will
lead to the belief that he is a registered professional engineer,
or purport so to be, in any way or by any means, including
advertising, unless he be duly licensed or registered by the
professional association and not suspended or struck from
membership therein. Thus, the word "engineer" falling under
the prohibition of provincial and territorial laws of public order,
when arrogated in the manner described above, equally falls
under the prohibition of paragraph 9(1)(d) of the Act because
it is a "word ... likely to lead to the belief that the wares or
services in association with which it is used have received or are
produced, sold or performed under ... governmental ...
approval or authority". The Canadian public is entitled to infer
such authority from employment of the word "engineers" in a
provincial professional sense as much as in a federal trade mark
sense when it is officially approved for use in either
circumstance.
The expression "lead to the belief" must be taken to mean
both the official and the colloquial designations accorded to
professionals, with the result that the registrar should not allow
the registration of expressions such as "bone surgeons",
"divorce lawyers", and, a fortiori, "lubrication engineers".
A further ground for declining to register professional desig
nations as trade marks is the fact that the registrar cannot
practicably know, from day to day, who is entitled to bear a
professional title or who is forbidden to do so by reason of
expulsion from a professional association or relinquishment of
professional status. The matter of discipline rests with the
provincial and territorial governing bodies.
The Court did not consider it necessary to examine the
paramountcy doctrine of constitutional construction, there
being no conflict between the federal and provincial statutory
provisions upon which to invoke the doctrine. In the instant
case, conflict is avoided by interpreting the Trade Marks Act
so as simply to require the registrar to abstain from registering
words which include names of professions whose members are
exclusively entitled to the use of such names in conformity with
provincial and territorial laws. The proposed trade mark
"Lubrication Engineers" is therefore not registrable.
CASES JUDICIALLY CONSIDERED
APPLIED:
Association of Professional Engineers of the Province of
Ontario v. Registrar of TradeMarks, [1959] Ex.C.R.
354; 31 C.P.R. 79; Pauze v. Gauvin, [1954] S.C.R. 15;
Laporte v. College of Pharmacists (Québec), [ 1976] 1
S.C.R. 101; Association of Professional Engineers v.
Martin and Bucklaschuk (1983), 23 Man.R. (2d) 244
(Co. Ct.); Attorney General of Canada et al. v. Law
Society of British Columbia et al., [1982] 2 S.C.R. 307;
Hodge v. Reg. (1883-84), 9 App. Cas. 117 (P.C.); Cherry
v. The King ex rel. Wood (1937), 69 C.C.C. 219 (Sask.
C.A.); Molson Companies Ltd. v. John Labatt Ltd. et al.
(1981), 58 C.P.R. (2d) 157 (F.C.T.D.).
REFERRED TO:
Scowby v. Chmn. of B. of Inquiry, [1983] 4 W.W.R. 97
(Sask. C.A.); Multiple Access Ltd. v. McCutcheon et al.,
[1982] 2 S.C.R. 161.
COUNSEL:
John Macera for appellant.
Nicholas Fyfe for respondent.
SOLICITORS:
Macera & Jarzyna, Ottawa, for appellant.
Smart & Biggar, Ottawa, for respondent.
The following are the reasons for judgment
rendered in English by
MULDOON J.: This appeal came on for oral
argument on September 12, 1984, at Ottawa. It is
an appeal from the decision of a hearing officer
duly appointed by the Registrar of Trade Marks
pursuant to subsection 37(9) of the Trade Marks
Act, R.S.C. 1970, c. T-10, as amended [by S.C.
1976-77, c. 28, s. 44]. For convenience, the hearing
officer is hereinafter referred to as: the registrar.
The registrar's written decision, dated September
29, 1983, rejected the appellant's opposition to the
respondent's application to register the trade mark
"Lubrication Engineers".
The appellant's notice of appeal recites a state
ment of material facts, of which the following
portions are effectively admitted by the respondent
in its reply to the notice of appeal, thus:
1. Lubrication Engineers, Inc. did, on the 10th day of January,
1977, make application to the Registrar of Trade Marks for
registration of a trade mark comprising the words LUBRICA
TION ENGINEERS for use in association with wares described as
"thickened greases, graphited roller lubricants, gear lubricants,
wheel bearing lubricants, fibrous-type lubricants, motor oil,
diesel oil, winterized oil, cotton picker oil, and steam cylinder
oil", the basis for filing being use in Canada since November 8,
1985, and use and registration in the United States of America.
Subsequently, the application was amended to include a dis
claimer to the word "LUBRICATION". Subsequent to this, a
revised application was filed by the applicant wherein a claim
to the benefit of Section 14 of the Trade Marks Act was
included.
2. The said application was advertised in the issue of the Trade
Marks Journal dated the 31st day of May, 1978.
3. The Appellant filed a Statement of Opposition dated the
24th day of August, 1978 against the Applicant's application.
Subsequently, an amended Statement of Opposition was filed
February 7, 1979, and served upon the Respondent on March
6, 1979. A revised Counterstatement was filed by the Respond
ent on April 5, 1979.
4. The revised Statement of Opposition filed by the Appellant
gave notice of Opposition to the proposed registration of the
respondent's trade mark, the grounds of opposition being as
follows:
(a) The opponent bases its opposition on the ground set out
in Section 37(2)(b), namely, that the trade mark claimed in
the application is not registrable in view of the provisions of
Section 12(1)(b) and should have been refused by the Regis
trar by virtue of the provisions of Section 36(1)(b).
(b) The opponent bases its opposition on the ground set out
in Section 37(2)(d), namely, that the trade mark claimed in
the application is not distinctive since it is not capable of
distinguishing the wares in association with which it is used
by the applicant from the wares of others nor is it adapted so
to distinguish them. It is submitted that the application be
refused accordingly.
(c) The opponent bases its opposition on the ground set out in
Section 37(2)(b), namely, that the trade mark is not regis-
trable in view of the provisions of Section 12(1)(b) and
Section 14(1)(d) in that the mark is prohibited by Section
9(1)(d) since the applicant has not satisfied any of the
necessary requirements pursuant to legislation in any of the
provinces or territories of Canada to enable it to use the word
"ENGINEERS", and hence should have been refused by the
Registrar by virtue of the provisions of Section 36(1)(b).
(d) The opponent bases its opposition on the ground set out
in Section 37(2)(b), namely, that the trade mark is not
registrable in view of the provisions of Section 12(1)(e) and
Section 14(1)(d) in that the mark is prohibited by Section 10
since the words "LUBRICATION ENGINEERS" have, by ordi
nary and bona fide commercial usage become recognized in
Canada as designating the kind, quality, and place of origin
of the wares or services as being those provided by a particu
lar class of person registered and operating pursuant to
relevant provincial statutes as engineers, and the use of the
mark by the applicant would be likely to mislead, and hence
should have been refused by the Registrar by virtue of
Section 36(1)(b).
(e) The opponent bases its opposition on the ground set out in
Section 37(2)(b), namely, that the trade mark is not regis-
trable in view of the provisions of Section 12(1)(b) and
Section 14(1)(c) in that the mark is deceptively misdescrip-
tive of the character or quality of the wares or services in
association with which it is used or of the conditions of or the
persons employed in their production or of their place of
origin, and that the mark is of such a nature as to deceive the
public, and hence should have been refused by the Registrar
by virtue of Section 36(1)(b).
(f) The opponent bases its opposition on the ground set out in
Section 37(2)(a), namely, that the application does not
comply with the requirements of Section 29(i) since, as a
matter of law, only those persons who have fully complied
with the relevant legislation, and who remain in good stand
ing in accordance with such legislation, are entitled to use the
mark, and hence the applicant cannot comply with Section
29(i) and accordingly the application should have been
refused by the Registrar by virtue of Section 36(1)(a).
6. The Respondent's revised Counterstatement stated as
follows:
(a) The applicant asserts that the advertised trade mark is
registrable in association with the wares recited in the adver
tised application and denies that the advertised trade mark is
either clearly descriptive or deceptively misdescriptive when
used in association with such wares, within the meaning of
Section 12(1)(b) of the Trade Marks Act (hereinafter all
references to Sections will be to Sections of the Trade Marks
Act).
(b) The applicant is the owner of United States trademark
registration 1,075,343, dated October 18, 1977, covering the
trade mark LUBRICATION ENGINEERS, as applied to thick
ened greases, graphited roller lubricants, gear lubricants,
wheel bearing lubricants, fibrous-type lubricants, motor oil,
diesel oil, winterized oil, cotton picker oil and steam cylinder
oil, and applicant has used the trade mark LUBRICATION
ENGINEERS in the United States in association with such
wares. A certified copy of United States registration
1,075,343 was filed in the Canadian Trade Marks Office
during the course of prosecution of the advertised applica
tion, on February 7, 1978. Applicant is entitled to the benefit
accorded by the provisions of Section 14 and applicant does
hereby claim the benefit of Section 14.
(c) Applicant denies that the advertised trade mark is not
distinctive and that it is not capable of distinguishing the
wares in association with which it is used by the applicant
from the wares of others. The advertised trade mark has been
used in Canada by the applicant for a period of some thirteen
years for the purpose of distinguishing its wares from those
of others, and the advertised trade mark is distinctive.
(d) Applicant denies that the advertised trade mark is
unregistrable in view of the provisions of Section 12(1)(b)
(see subparagraphs (a) and (b) of this counterstatement) and
further denies that adoption and/or registration of the adver
tised trade mark is prohibited by Section 9(1)(d). The adver
tised trade mark does not lead to belief that the wares in
association with which it is used have received or are pro
duced or sold under Royal, Vice-Regal or Governmental
patronage, approval or authority, and the advertised trade
mark is not intended to lead to such belief.
(e) Applicant denies that the advertised trade mark is unreg-
istrable in view of Section 12(1)(e) or that adoption or
registration of the trade mark is prohibited by Section 10.
The advertised trade mark has, to applicant's knowledge,
been used in Canada in association with the wares covered by
the advertised application, only by the applicant, and such
trade mark has not become recognized in Canada as desig
nating the kind, quality, quantity, destination, value, place of
origin or date of production of the wares in association with
which the trade mark is used by the applicant.
(f) Applicant denies that the advertised trade mark is unreg-
istrable in view of Section 12(1)(b) (see subparagraphs (a)
and (b) of this counterstatement) and denies that the trade
mark is deceptively misdescriptive of any character or quality
of the wares in association with which it is used or that it
deceptively misdescribes the conditions of or the persons
employed in the production of such wares or of their place of
origin.
(g) Applicant denies that the advertised application fails to
comply with the requirements of Section 29(i). The adver
tised application does, in fact, include a statement required
by Section 29(i) and, as applicant believes itself to be the sole
user of the trade mark in Canada, and as applicant has not
previously encountered objection to its use of the trade mark
from any person, corporation or Governmental authority,
including the opponent herein, notwithstanding some thirteen
years of Canadian use, applicant had, at the date of filing of
the application, and has presently, no reason to believe that it
is not entitled to use the trade mark in Canada in association
with the wares covered by the advertised application.
7. The Appellant filed and served the affidavit of Caroline
Botterell on July 5, 1979, and the affidavit of Claude Lajeu-
nesse on September 12, 1979 as evidence on which it would be
relying in the Opposition proceeding.
8. The Respondent filed two affidavits of Robert F. Wimmer
on January 9, 1980 as its evidence in the Opposition
proceeding.
[Paragraphs 9, 10, 11 and 12 refer to procedural manœuvres in
the opposition proceedings before the registrar.]
13. ... the Registrar granted an order to cross-examine Mr.
Wimmer by way of written interrogatories. Such written inter
rogatories were sent to Mr. Wimmer, and answers to the
written interrogatories were filed at the Trade Marks Office.
15. A Hearing was scheduled by the Registrar on Thursday,
June 23, 1983 at 9:30 a.m. at which representatives for each of
the parties attended.
16. By way of a written decision dated September 29, 1983, the
Registrar of Trade Marks rejected the Appellant's Opposition
pursuant to Section 37(8) of the Trade Marks Act.
The appellant does not rely upon paragraphs 12
and 17 of the notice of appeal.
The respondent's reply responds to the allega
tions of error asserted in the notice of appeal,
supports the registrar's reasons and prays that the
appeal be dismissed.
It is important to note that the respondent has
disclaimed the right to the exclusive use, apart
from the sought-after trade mark, of the word
"Lubrication", because it is not registrable. If the
only remaining word "Engineers" be equally not
registrable, then the combination or totality in its
composite form, "Lubrication Engineers", cannot
be registered. This is the nub of the real dispute
between the parties, as it was before the registrar.
The appellant cited here just as, in the role of
opponent, it cited to the registrar the judgment of
the Exchequer Court of Canada in Association of
Professional Engineers of the Province of Ontario
v. Registrar of TradeMarks, [1959] Ex.C.R. 354;
31 C.P.R. 79. That case involved an appeal from a
decision of the Registrar of Trade Marks rejecting
the opposition of The Association of Professional
Engineers of Ontario to the registration of the
trade mark "Finishing Engineer" for use as the
title of a periodical published by Metalwash Ma
chinery Co. of New Jersey, one of the United
States of America. The opponent based its appeal
on two recited grounds: (a) that the registrar erred
in holding that the trade mark was not clearly
descriptive or deceptively misdescriptive of the
wares; and (b) that the adoption and use by the
applicant of the trade mark would constitute a
breach of The Professional Engineers Act, R.S.O.
1950, c. 292, and all similar provincial and territo
rial statutes.
In his reasons for judgment in the above-men
tioned case, Mr. Justice Fournier wrote the follow
ing passages:
As to the issues of the periodical filed with the Registrar and
which I have perused, they deal with the applicant's products
and the products of other firms to which they have made
contributions. They contain technical information, articles and
engineering data of interest to those who are engaged in
finishing materials and in the finishing business. It is stated in
the affidavits that the title correctly indicates the nature of the
publication and its contents and is directed to the heads of
departments of companies responsible for the finishing of fab
ricated parts. [Page 359 Ex.C.R.; pages 84-85 C.P.R.]
There is no doubt that the title "Finishing Engineer" is
clearly descriptive of the character or quality of the wares in
connection with which it is proposed to be used. [Page 360 Ex.
C.R.; page 86 C.P.R.]
In the present instance the trade mark "Finishing Engineer",
at the date of the application for registration, comprised two
English words used to describe persons who were trained and
engaged in the engineering field and specialized in the finishing
arts. The use of these two words as the title of a publication is
sufficient to impart the knowledge that it will contain ideas,
data, information to executives and engineers to whom new
methods and new materials for finishing are of interest. In
other words, "Finishing Engineer" describes clearly one who
deals with the science of engineering and the finishing arts.
That is exactly what the publication does. It is not distinctive of
the applicant's publication but a clear description of its con
tents. Grammatically and in ordinary language, the use of these
two words as the title of a periodical call immediately to my
mind (and, I believe, to the mind of those who read them) the
quality or character of the publication. I do not see any other
purpose for which the words could be used or any other
significance which could be attached to them. [Page 362
Ex.C.R.; page 88 C.P.R.]
In my view, the registration of the trade mark "Finishing
Engineer" would give the applicant a monopoly on these words
to be used as the title of its periodical. This would certainly
embarrass and harass any one who would endeavour to publish
writings, books or publications under a title, the first word of
which would be "Finishing", followed by another word related
to engineering, such as "Finishing Engineering", "Finishing
Engineers' Handbook" or "Finishing Engineers' Information".
All these publications would deal with the finishing arts and
would indicate the nature of their contents. The word "nature"
being defined in English dictionaries as "character", the above
publications would be characterized by their titles.
For the reasons given supra, I find that the words "Finishing
Engineer" used as the title of the applicant's periodical are
clearly descriptive of the character and quality of the appli
cant's wares in association with which they are used or pro
posed to be used and therefore not registrable under the
provisions of the Trade Marks Act. Having arrived at that
decision, I shall not deal nor express an opinion on the second
ground invoked in the notice of appeal. [Page 363 Ex.C.R.;
pages 88-89 C.P.R.]
Mr. Justice Fournier's reasoning is cited for
illustrative purposes in the 3rd edition of Fox, The
Canadian Law of Trade Marks and Unfair Com
petition (Carswell, 1972) in which, at pages 91
and 92 it is stated:
The principle that descriptive, misdescriptive and geograph
ical words are normally refused protection in an action, and are
considered as being prima facie unregistrable as trade marks
under the statute, is the same in each case. If a word or other
mark is not distinctive of one person's wares or services its use
cannot be monopolized. Ordinary words of the language and
other indicia that do nothing more than describe the
character 126 quality or place of origin of the wares or services in
association with which they are used or of the persons respon
sible for their presence on the market ought to be open to equal
use by all traders. [The footnote 126 refers to the above-cited
case.]
The evidence, including that which was intro
duced for this appeal hearing, is voluminous. At
the hearing counsel directed the Court's attention
to portions of the evidence which each counsel
thought to be worth emphasizing. Moreover, the
reservation of judgment has accorded more time
and occasion, both exploited, for the perusal of the
evidence. Only one deponent, Robert F. Wimmer,
of Forth Worth, Texas, the respondent's senior
vice-president, was cross-examined, and that was
performed by means of written interrogatories and
answers. The appellant's evidence is expressed in
the affidavits of: Claude Lajeunesse who, at the
time of deposing on September 7, 1979, was the
appellant's general manager; Caroline Botterell,
an employee of the appellant's agents, who
researched various provincial and territorial stat
utes governing the engineering profession; Patricia
Heidi Sprung, a student-at-law, who performed an
extensive search of libraries with the help of the
personnel and computer of the Bibliographic
Search Unit, Interlibrary Loans, at the Canadian
Institute for Scientific and Technical Information
(CISTI) of the National Research Council of
Canada; and John Kevin Carton, barrister and
solicitor. The latter two deponents Sprung and
Carton made their respective affidavits in contem
plation of the appeal proceedings in this Court. So
did the respondent's deponent, Charles L. Brandt,
of Forth Worth, Texas, who is the respondent's
executive vice-president.
It may be noted, in passing, that Mr. Brandt in
his affidavit dated January 13, 1984 swore as
follows:
15. The trade mark LUBRICATION ENGINEERS was originally
selected and employed because the nature of the product for
which the trade mark would be used required specialized
knowledge and expertise in lubrication problems and solutions.
It was deemed unique and exclusive to Lubrication Engineers,
Inc. and their products, which outperformed their counterparts
on the market.
See, also, paragraph 12 of Robert F. Wimmer's
affidavit sworn on June 25, 1981.
Now, recalling the respondent's disclaimer of
the word "Lubrication" in its desired registered
trade mark, which word although a noun is therein
employed in an adjectival sense, the assertion of
the excellence or the enhancement of a quality of
the product which is conveyed by the proposed
trade mark is very clear. The word "Engineers"
clearly conveys a connotation of the specialized
knowledge and expertise of a trade or profession;
and in the plural form it further connotes the
special or extraordinary excellence associated with
second, subsequent or multiple professional opin
ions and their collective fund of expertise. One is
recalled to the words of Mr. Justice Cattanach in
the case of Molson Companies Ltd. v. John Labatt
Ltd. et al. (1981), 58 C.P.R. (2d) 157, reported at
page 160, thus:
The registration of the word "extra" as a trade mark was
opposed upon the ground that its use in association with brewed
alcoholic beverages is "clearly descriptive ... of the character
or quality of the wares ... in association with which it is ...
proposed to be used", so that its registration is precluded by
para. 12(1)(b).
The Registrar rejected the opposition but on appeal from
that decision the appeal was allowed without written reasons.
By coincidence that appeal had been heard by myself (Court
file No. T-3011-80). During the course of the presentations by
counsel it was made abundantly clear that, in my opinion, the
Registrar had really gone so wrong as to make it necessary to
interfere with his decision.
The word "extra" used in association with wares has the
laudatory connotation that the wares are something beyond the
usual or put another way, extraordinary, special and the like.
Its use standing alone is elliptical, and to repeat and adopt the
reasoning of Pigeon J. in S. C. Johnson & Son, Ltd. et al. v.
Marketing Int'l Ltd. (1979), 44 C.P.R. (2d) 16 at p. 25, 105
D.L.R. (3d) 423 at p. 430, [1980] 1 S.C.R. 99 at p. 110, that
use is therefore "descriptive of the wares" which precludes
there being merely suggestive attributes. It follows from this
that the word "extra" signifies an enhancement of a character
or quality of the wares in a material aspect. It was for these
reasons, verbally expressed to counsel during argument, that
the appeal was allowed.
This being so the word "extra" is not registrable by virtue of
para. 12(1)(b).
Cattanach J. went on to hold [at page 160] that
the proposed trade mark in question consisting of
the respondent's name and the word "extra" was
not registrable "since both components of the pro
posed trade mark ... are separately not regis-
trable". Thus "the combination is also not
registrable".
The evidence of the appellant clearly indicates
that certain registered professional engineers in
Canada and in the U.S.A. have cultivated a
professional interest and expertise in a field of
science which can be designated only as lubrica
tion engineering. Indeed the existence of the
American Society of Lubricating Engineers
(ASLE) and the respondent's awareness of it are
both amply proved. Exhibit H to Patricia H.
Sprung's affidavit shows that as early as August
1964, one C. H. Elsley, of Hamilton, Ontario, was
the Canadian regional vice-president of the ASLE.
Exhibit X to that affidavit discloses that for the
year 1974-75, one William H. Mann had "the
distinction of being the first Canadian to serve as
national president of ASLE". Exhibits AA and AB
to Ms. Sprung's affidavit show that ASLE's 32nd
annual meeting was organized by "dedicated
members of the Montréal section planning com
mittee" and was held in Montreal, Quebec, during
May of 1977. Ms. Sprung's affidavit, sworn
December 9, 1983, was not before the registrar,
and that fact no doubt accounts for his finding
that "the earliest publications of the ASLE
appended to the Lajeunesse affidavit are dated in
1978 which is well after the filing date of the
present application".
Here, the appellant has adduced ample evidence
upon which the Court can form the same conclu
sion as did Fournier J. in the "Finishing Engineer"
decision (supra). On that basis the decision of the
registrar ought to be set aside in the case at bar.
The proposed trade mark is clearly descriptive or
deceptively misdescriptive of the character or qual
ity of the wares of the respondent. It offends
paragraph 12(1)(b) of the Act.
There are some distinctions between the judg
ment in Association of Professional Engineers of
the Province of Ontario v. Registrar of Trade
Marks and the case at bar which may loom larger
in another forum, although they appear not to be
determinative of the issue here. For example, the
report of Mr. Justice Fournier's judgment does not
indicate any disclaimer of the word "Finishing".
Also, the provisions of section 14 were not relevant
in that case. Further, the applicant's wares there
consisted of a series of periodical publications,
rather than the greases, graphites and oils which
figure here in the respondent's wares. Indeed, the
registrar here expressed this latter distinction as a
basis for not applying the judgment of Fournier J.
to the circumstances of this case.
Having rejected the appellant's opposition based
on paragraph 12(1) (b) of the Trade Marks Act,
because he found that the present case is distin
guishable from the "Finishing Engineer" case, the
registrar considered that he did not need to exam-
ine the respondent's claim pursuant to section 14
of the Act. He wrote:
Throughout this opposition, and during the course of the oral
hearing, many submissions were made respecting the appli
cant's claim to the benefit of Section 14 of the Act. My finding
with respect to the grounds of opposition based on Section
12(1)(b) of the Act render an examination of the applicant's
Section 14 claim unnecessary. In passing, however, I wish to
note that the Wimmer affidavits (and, in particular, the third
Wimmer affidavit) would have been insufficient, in any event,
to support a claim to the benefit of Section 14 of the Act in
view of the minimal sales effected by the applicant [the
respondent, here] in Canada.
If the registrar had pursued and analysed the
respondent's claim under section 14 further, he
might well have concluded that it is also not
sustainable for other and even better reasons than
merely "the minimal sales effected by the ...
[ ... respondent ... ] in Canada".
Paragraph 14(1)(c) and section 9, when under
stood from the perspective of public policy, sub
sume that part of paragraph 12(1)(b) which
negates registration of a trade mark if it be "either
clearly descriptive or deceptively misdescriptive
... of ... the persons employed in their [the wares'
or services] production". Thus, there is a more
important ground than that which is cryptically
expressed in 12(1)(b) for refusal of registration of
a proposed trade mark, and it is formulated both
in paragraph 14(1)(c) and in paragraph 9(1)(d).
Even if this Court be in error in allowing this
appeal by overruling the registrar's finding in
regard to registrability pursuant merely to para
graph 12(1)(b), there is the further ground of
opposition which relies upon and resides within the
various provincial and territorial enactments gov
erning the engineering profession. This ground was
articulated by the appellant both in the opposition
proceedings before the registrar, and upon appeal
before the Court in the case at bar. The same or a
similar basis of appeal was advanced before Four-
nier J. in the "Finishing Engineer" case, but as he
noted in the passages quoted above, having arrived
at his decision in regard to paragraph 12(1)(b), he
declined to deal with or express an opinion on the
second ground invoked in the notice of appeal.
Here, however, that additional ground of opposi
tion (and of appeal) was considered by the regis
trar in relation to paragraph 9(1)(d) of the Act.
The registrar, in his reasons for his decision
wrote:
As for the opponent's ground of opposition based on Section
9(1)(d) of the Act, that subsection reads as follows:
9. (1) No person shall adopt in connection with a business, as
a trade mark or otherwise, any mark consisting of, or so
nearly resembling as to be likely to be mistaken for ...
(d) any word or symbol likely to lead to the belief that the
wares or services in association with which it is used have
received or are produced, sold or performed under royal,
vice-regal or governmental patronage, approval or authority
The only possibly relevant portion of Section 9(1)(d) of the Act
is the reference to "governmental patronage, approval or
authority" and the opponent has taken the position that the use
of the applicant's trade mark would lead to the belief that the
applicant had complied with the provisions of the various
provincial and territorial statutes relating to the regulation of
the engineering profession in Canada. Even if the opponent's
conclusion were accepted, I fail to see how it would lead to the
further conclusion that the applicant's wares have somehow
received or are produced or sold under governmental patronage,
approval or authority. Simply because a particular government
allows a particular profession to regulate itself does not thereby
lead to the conclusion that all activities of that profession are
performed under the authority of the government or with the
approval of the government nor would it lead to the further
conclusion that the public would believe such a relationship to
exist. Thus, the opponent's ground of opposition based on
Section 9(1)(d) of the Act is unsuccessful.
Although the registrar evidently misconstrued the
import of that provision, he did seem to appreciate
the meaning of "governmental ... authority". The
expression is not narrowly restricted to the idea of
the government or ministry of the day in the
partisan sense of identification with the first minis
ter and his or her political party. The expression,
rather, comprehends the larger notion of state
authority emanating from the sovereign and the
people and it includes the legislative, executive and
judicial branches of government and perhaps even
municipal authorities.
Section 9 of the Act evinces a civil, administra
tive purpose which is confided to the registrar and
to the courts, as well as a criminal law aspect or
purpose which is of no direct concern here, except
to note that both aspects commodiously express
public policy in support of public order. Such is
also the thrust of paragraph (c) in section 14, with
which the registrar thought it unnecessary to deal,
in regard to the respondent's claims for registra
tion of its proposed trade mark. In light of the role
of paragraph 12(1)(b) in the primary determina
tion of this appeal, and that paragraph's parallel
similarity with an element of paragraph 14(1)(c),
it will be convenient to recite the pertinent provi
sions of section 14 here:
14. (1) Notwithstanding section 12, a trade mark that the
applicant or his predecessor in title has caused to be duly
registered in his country of origin is registrable if, in Canada,
(c) it is not contrary to ... public order or of such a nature as
to deceive the public; or
(d) it is not a trade mark of which the adoption is prohibited
by section 9 or 10. [Emphasis added.]
So, irrespective of section 12, a foreign trade mark
may not be registered if it be contrary to public
order or of such a nature as to deceive the public,
according to section 14, which in turn refers conso-
nantly to the matters of public order listed in
section 9. Section 9 is of general application and is
not restricted to the matter of foreign trade marks.
Provincial statutes governing professions are
laws of public order. In the case of Pauze v.
Gauvin, [ 1954] S.C.R. 15, Mr. Justice Taschereau
writing as well for Mr. Justice Fauteux, asserted,
at page 19:
[TRANSLATION] It is not the first time that the courts have
had to consider such a case, and to decide that this Architects
Act was a law of public order. I wholeheartedly concur with
these decisions and with the views expressed by the dissenting
judges in the case at bar. [Emphasis added.]
Cartwright J. in separate reasons concurred with
the opinion of Taschereau J., but on this point in
particular the Supreme Court was quite unani
mous, for even the dissenting judgment of Rand
and Kellock JJ., delivered by Mr. Justice Kellock,
opined, at page 23, thus:
It cannot be contended, in my opinion, in the face of this
preamble that the statute is other than one of public order ....
I would in any event be of opinion that a statute of the
character here in question is one of public order importing
nullity into all contracts made in breach of it; [Emphasis
added.]
More recently, the Supreme Court of Canada
again speaking unanimously on this point said,
through de Grandpré J., in Laporte v. College of
Pharmacists (Québec), [1976] 1 S.C.R. 101, at
pages 102-103:
This question must be considered in the light of the principle
laid down by this Court in Pauze v. Gauvin. In particular I
adopt the following passage from the reasons of Taschereau J.,
as he then was (at p. 18):
[TRANSLATION] The statutes creating these professional
monopolies, sanctioned by law, access to which is controlled
and which protect their members in good standing who meet
the required conditions against any competition, must how
ever be strictly applied. Anything which is not clearly prohib
ited may be done with impunity by anyone not a member of
these closed associations.
In the Manitoban case of Association of Profes
sional Engineers v. Martin and Bucklaschuk
(1983), 23 Man.R. (2d) 244, Ferg C.C.J. (as he
then was) described the issue there to be resolved,
thus, at pages 244 and 245:
The applicant, considering itself "a person aggrieved" brings
this application pursuant to the provisions of the Business
Names Registration Act, C.C.S.M., c. B110, s. 15(1), seeking
an order that the respondent, the Minister of Consumer and
Corporate Affairs, cancel the registration of the business name
of the other respondent, "I.S.-Concrete Engineering", on
grounds, inter alia, that since the respondent Peter Martin is
not a registered professional engineer, it is on public grounds
objectionable that his company be perceived to be or is held out
to be, capable of providing professional engineering services.
The application is opposed by the respondent Minister, and of
course, by the other respondent, Peter Martin.
It can be seen that the issue before Judge Ferg was
not the same as the issue in this present appeal.
Although the issue appears to be similar in legal
principle, the facts there were that the respondent
Martin, not a registered professional engineer,
through his sole proprietorship firm supplied and
installed sealing compounds for concrete structures
and effected repairs to such structures, including
sealing nuclear reactors, repairing spillways for
hydro projects, and repairing concrete dams, other
water control structures, bridges, highways and
auto parkades. He claimed that he did not hold
himself out to be a professional engineer, and that
mostly his dealings were with professional and
consulting engineers themselves engaged by pro
vincial governments, cities, hydro utilities and
other works departments.
After noting the pertinent provisions of The
Business Names Registration Act of Manitoba
[R.S.M. 1970, c. B-110], Judge Ferg made refer
ence to the following sections of The Engineering
Profession Act, C.C.S.M., c. E-120, thus:
28 Save as in this Act otherwise provided, no person shall
(a) engage in the practice of professional engineering; or
(b) assume verbally or otherwise the title "professional engi
neer", or any abbreviation thereof, or any name, title, desig
nation, or descriptive term, that may lead any other person to
believe that he is a professional engineer or entitled to engage
in the practice of professional engineering; or
(c) act in such a manner as to lead to the belief that he is
authorized to fulfil the office of, or to act as, a professional
engineer; or
(d) advertise, list, display, or use, at any time or in any
manner, in connection with his name, any name, title, desig
nation, or descriptive term, implying, or calculated to lead
any other person to infer, that he is registered under this Act
or entitled to engage in the practice of professional
engineering;
unless he is registered under this Act and is a member of the
association or is the holder of a subsisting licence granted under
this Act. [Emphasis added.]
29 Any person who violates any provision of this Act is guilty
of an offence and is liable, on summary conviction, for each
first offence, to a fine of not less than twenty-five dollars and
not more than one hundred dollars, and for each offence
committed subsequent to the first conviction, to a fine of not
less than one hundred dollars and not more than two hundred
dollars.
The above-quoted section 29 derives its legislative
and constitutional authority from section 92, head
15 of the Constitution Act, 1867 [30 & 31 Vict.,
c. 3 (U.K.) [R.S.C. 1970, Appendix II, No. 5] (as
am. by Canada Act 1982, 1982, c. 11 (U.K.),
Schedule to the Constitution Act, 1982, Item 1)],
which provides that provincial legislatures may
exclusively make laws in relation to:
92....
15. The Imposition of Punishment by Fine, Penalty or
Imprisonment for enforcing any Law of the Province made in
relation to any Matter coming within any of the Classes of
Subjects enumerated in this Section.
Judge Ferg, referring to The Engineering
Profession Act (supra), went on to hold, at pages
246 and 247:
This Act, a public statute, carries with it the full sanction of
the legislative authority, and provides that, in the event of a
breach, an offender may be prosecuted. (See s. 29 supra) ....
But one must not lose sight of the fact that these statutes do
exist, for the primary purpose of protecting the public whether
it be from quack doctors, bunkhouse lawyers or unqualified
engineers .... the court must act only for the benefit of the
public who are likely to be deceived or misled or confused; the
grievance of a party being entirely a secondary result.
The statute setting up the profession is entitled "The Engi
neering Profession" (emphasis is mine), and the word appears
throughout the statute. Certainly, the profession cannot
monopolize the use of the word, it can have many other uses,
but when a non-professional uses the word in a business title or
name and advertises to the public using that name, it seems to
me clear that person fully intends to convey to the public that
engineering services are available or provided to that public. If
it is not intended to convey a special meaning to public, then
why use the word in a business title, and especially here, for the
kind of business the respondent Peter Martin carries on. What
other connotations or meaning could it possibly have?
The answer to that question, in the case at bar,
was provided by the respondent's executive vice-
president Charles L. Brandt, quoted above, as well
as by Robert F. Wimmer.
The governance of professions is a matter of
provincial legislative jurisdiction in Canada. Spe
cific instances are illustrated in the above-cited
jurisprudence regarding laws of public order.
Another recent authoritative instance is seen in the
case of Attorney General of Canada et al. v. Law
Society of British Columbia et al., [1982] 2
S.C.R. 307. There, the unanimous judgment of the
Supreme Court of Canada was expressed by Mr.
Justice Estey, who wrote, at pages 334 and 335:
It is the establishment of this protection that is the primary
purpose of the Legal Professions Act. Different views may be
held as to the effectiveness of the mode selected by the Legisla
ture, but none of the parties here challenged the right of the
province to enact the legislation.
It is for the Legislature to weigh and determine all these
matters and I see no constitutional consequences necessarily
flowing from the regulatory mode adopted by the province in
legislation validly enacted within its sovereign sphere as is the
case here.
The words of Estey J. in the Supreme Court of
Canada recall the speech of Sir Barnes Peacock
giving the judgment of the Judicial Committee of
the Privy Council in Hodge v. Reg. (1883-84), 9
App. Cas. 117, at page 132, Olmsted, Vol. 1, page
184, at pages 198 and 199:
It appears to their Lordships, however, that the objection
thus raised by the appellants is founded on an entire misconcep
tion of the true character and position of the provincial legisla
tures. They are in no sense delegates of or acting under any
mandate from the Imperial Parliament. When the British
North America Act enacted that there should be a legislature
for Ontario, and that its legislative assembly should have
exclusive authority to make laws for the Province and for
provincial purposes in relation to the matters enumerated in
sect. 92, it conferred powers not in any sense to be exercised by
delegation from or as agents of the Imperial Parliament, but
authority as plenary and as ample within the limits prescribed
by sect. 92 as the Imperial Parliament in the plenitude of its
power possessed and could bestow. Within these limits of
subjects and area the local legislature is supreme, and has the
same authority as the Imperial Parliament, or the Parliament
of the Dominion, would have had under like circumstances to
confide to a municipal institution or body of its own creation
authority to make by-laws or resolutions as to subjects specified
in the enactment, and with the object of carrying the enactment
into operation and effect.
The governmental authority of provincial legisla
tures is just as ample and plenary today, within
their sovereign spheres, as it was held to be a
century ago.
The affidavit of Caroline Botterell, sworn July
14, 1979, was before the registrar in the opposition
proceedings, just as it is before this Court in the
appeal at bar. To that affidavit are annexed as
exhibits copies of the Ordinances of both territo
rial legislatures, as well as copies of the statutes of
all ten provincial legislatures in relation to the
matter of the engineering profession. In each and
every one of those enactments of public order there
are provisions extremely similar to or the same as
sections 28 and 29 of The Engineering Profession
Act of Manitoba already cited above. That is to
say, those legislatures have all solemnly enacted
within their sovereign sphere of constitutional
competence that no person (which expression also
designates a corporation) shall arrogate to himself
or herself any word, abbreviation, name or desig
nation which will lead to the belief that he or she is
a registered professional engineer, or purport so to
be, in any way or by any means, including adver
tising, unless he or she be duly licensed or regis
tered by the professional association and not sus
pended or struck from membership therein.
One example, expressed in both official lan
guages, is to be found in the Engineers Act, c. 262
of the statutes of Quebec [R.S.Q. 1964 (as am. by
S.Q. 1973, c. 60, s.22)]. It provides:
27. Any person not a member in good standing of the Order
who:
(1) performs any of the acts contemplated in section 3 of
this act;
(2) assumes the title of engineer alone or qualified, or
makes use of any abbreviation of such title, or of any name,
title or designation which might lead to the belief that he is
an engineer or a member of the Order;
(3) advertises himself as such;
(4) acts in such a manner as to lead to the belief that he is
authorized to fulfil the office of or to act as an engineer;
(5) authenticates by means of a seal, signature or initials a
document relating to the practice of the engineering profes
sion; or
(6) knowingly advertises or designates as an engineer a
person who is not a member of the Order,
is guilty of an offence and is liable to the penalties provided in
section 182 of the Professional Code.
Each of the other statutes and Ordinances provides
that anyone who breaches its provision in this
regard is liable, upon summary conviction, to pay
a fine and, in many instances, to imprisonment,
too.
Here, it ought to be noted that, in response to
the third interrogatory on his affidavit, as to
whether the respondent is qualified to do business
in any province or territory of Canada, Mr.
Wimmer answered "No". The respondent, more
over, has never pretended that it or its officers or
employees is a member in good standing of any
provincial or territorial professional engineering
association. The respondent did tender evidence of
the professionnal status of some of its personnel
under pertinent state law in the U.S.A., but that
evidence in the circumstances is quite irrelevant.
Thus, the word "engineer", falling under the
prohibition of provincial and territorial laws of
public order, when arrogated by an unlicensed or
unregistered person in such a manner as to lead to
the belief that he or she is legally authorized to
bear that title, equally falls under the prohibition
of paragraph 9(1)(d) of the Trade Marks Act
because it is a "word . .. likely to lead to the belief
that the wares or services in association with which
it is used have received or are produced, sold or
performed under ... governmental . .. approval or
authority". Canadians in large measure do rely,
and are justly entitled to rely, upon and to believe
in official acts or designations effected pursuant to
governmental approval or authority. They are en
titled to infer such authority from employment of
the word "engineers" in a provincial professional
sense as much as in a federal trade mark sense
when it is officially approved for use in either
circumstance.
In utilizing the expression "lead to the belief",
or words to the like effect, Parliament and the
other legislatures must be taken to be meaning
both the official and the popular or colloquial
designations accorded to professionals. Physicians
and surgeons, for example, are almost universally
referred to as doctors. Barristers and solicitors are,
in the English language at least, referred to as
lawyers. So when it comes to the determination of
registrability of proposed trade marks, the regis
trar ought to allow no "baby doctors", "bone
surgeons", "divorce lawyers" or "litigation barris
ters" and, a fortiori, no "lubrication engineers".
There is another reason for declining to register
professional designations as trade marks. It is a
practical reason which is completely consonant
with the statutory prohibitions. It is that the regis
trar cannot practicably know, from day to day,
who is entitled to bear a professional title or who is
forbidden to do so by reason of expulsion from a
provincial or territorial professional association or
relinquishment of professional status. Records of
such matters are kept by provincial and territorial
governing bodies established by their appropriate
statutes. They have the authorized task of effect
ing professional discipline and of enforcing their
respective laws prohibiting unauthorized practice
and unauthorized use of professional designations
which "lead to the belief" among the public that
an unlicensed or unregistered person is a qualified
member of the particular professional association.
Among the several jurisdictions of a federal
state, such as Canada is, there is as much, if not
more, need for comity of law as there is between
nations. Such need is no doubt the reason for
which Parliament enacted paragraph 9(1)(d) of
the Trade Marks Act.
In view of the conclusions above expressed, there
seems to be no need to consider the paramountcy
doctrine of constitutional construction. There
appears to be no conflict between the respective
federal and provincial statutory provisions upon
which to invoke that doctrine. If, however, some
need to invoke the paramountcy doctrine can be
perceived in these circumstances, then this Court
resorts to recent jurisprudence of appellate courts
in Canada. One can sense the pulse of the living
law on that doctrine in: Scowby v. Chmn. of B. of
Inquiry, [1983] 4 W.W.R. 97, a unanimous judg
ment of the Saskatchewan Court of Appeal, now
to be considered by the Supreme Court of Canada
[judgment not yet rendered, file no. 17313]; Mul
tiple Access Ltd. v. McCutcheon et al., [1982] 2
S.C.R. 161; and Attorney General of Canada et al.
v. Law Society of British Columbia et al. (supra).
Some passages from the reasons of Mr. Justice
Estey, speaking for the unanimous Supreme Court
of Canada, in the Jabour case, above cited, will
demonstrate by analogy that in this case at bar,
the acknowledged paramountcy of Parliament's
law on trade marks does not override the provin
cial prohibitions against unauthorized use of statu
tory professional designations. He wrote as fol
lows, at page 347:
The relationship between provincial regulatory statutes and
the federal law has been discussed repeatedly in the courts.
These cases are generally referred to as the `regulated indus
tries cases'. The appellants rely on these authorities to demon
strate the paramount position of the federal authority, at least
where:
(a) the provincial statute does not expressly authorize the
conduct of the public authority before the court, and
(b) the federal statute expressly renders such conduct
criminal.
The respondents on the other hand draw from these cases the
conclusion that unless the federal statute clearly conflicts with
the provincial regulatory statute, the proper interpretation is
that which avoids any conflict.
Again, at pages 348 and 349, the following pas
sage appears:
Under a Quebec statute a Commission appointed by the
province established minimum prices for the sale of milk in the
Province of Quebec. The Court in R. v. Simoneau (1935), 65
C.C.C. 19, followed the same line of reasoning as in Chung
Chuck and found no conflict between the provincial and federal
statutes, and further that compliance with a valid provincial
statute could not result in an action contrary to the public
interest.
Mr. Justice Estey then, on the same page, quoted
Martin, J.A. then of the Saskatchewan Court of
Appeal in Cherry v. The King ex rel. Wood
(1937), 69 C.C.C. 219, at page 226, thus:
Moreover, it surely cannot be successfully argued that a board,
in exercising the powers conferred upon it by the Legislature
and which are designed to regulate and control the production,
processing and distribution of a commodity in the Province
"having regard primarily to the interests of the public and to
the continuity and quality of supply" renders itself liable to a
prosecution under s. 498; if this were so the Province could not
exercise the powers conferred upon it with respect to property
and civil rights over which it has exclusive power.
Examples of this sort abound in the reasons for
judgment in the Jabour case, but one final citation
from it will suffice here. At pages 355 and 356,
Estey J. is quoted thus:
This duty is found in the context of a wide range of powers
granted to the Law Society to govern the profession in the
interest of the public and the members of the Society. The
words adopted by Parliament in s. 32 and restated above are
not ordinarily found in language directed to the actions of
persons holding office under a provincially authorized regulato
ry body and discharging their responsibilities to the community
pursuant to their constitutive statute. This is particularly so
where the group said to be acting "conspiratorially" was in fact
proceeding at the time in question as a deliberative body whose
existence was mandated by a provincial statute. When a federal
statute can be properly interpreted so as not to interfere with a
provincial statute, such an interpretation is to be applied in
preference to another applicable construction which would
bring about a conflict between the two statutes.
Thus, in this instance, conflict is avoided by
interpreting the Trade Marks Act so as simply to
require the registrar to abstain from registering
words, or expressions which include words, desig-
nating the popular or official name of professions
whose members are exclusively entitled to the
commercial or professional use of such names,
designations or titles in conformity with provincial
and territorial laws.
Finally, since the word "Lubrication" is dis
claimed, and the word "Engineers" is not to be
registered, for all of the above expressed reasons,
the proposed trade mark "Lubrication Engineers"
falls. It is not to be registered. The appeal is
allowed with taxable costs in the appellant's
favour.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.