Proposed Practice Notice: Professional Designations and their initials

Publication Date: xxxx-xx-xx

This notice is intended to clarify the Trade-marks Office practice with respect to applying the provisions of paragraph 12(1)(b) of the Trade-marks Act (hereinafter referred to as the "Act") to professional designations.

When confronted with a mark that appears to be the title of a profession, research is conducted to determine whether it is a professional designation. Where research discloses that the trade-mark applied for does consist of a professional designation, examiners are to apply the first impression test in light of the applicant's wares and/or services (see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, (1978) 40 C.P.R. (2d) 25 and Mitel Corp. v. Registrar of Trade Marks, (1984) 79 C.P.R. (2d) 202).

If it is considered that the prospective consumer, when faced with the applied for trade-mark would immediately, as a matter of first impression, assume that the wares or services are produced by a professional from that designation, the mark will be found to be clearly descriptive of the persons employed in the production of the wares and services and unregistrable pursuant to the provisions of paragraph 12(1)(b) of the Act [see Life Underwriters Assn. of Canada v. Provincial Assn. of Québec Life Underwriters (1988 FCTD 1) and Lubrication Engineers, Inc. v. Canadian Council of Professional Engineers (1992 FCA 243)].

Moreover, the Office considers that the mere addition of an abbreviation, acronym or initial of the professional designation contained in the trade-mark will not render the trade-mark registrable (see Life Underwriters Assn., supra); College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbian vs. Council of Natural Medicine College ofCanada [2009 FC 1110]

Note: This practice notice is intended to provide guidance on current Trade-marks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.