A-1268-84
Lubrication Engineers, Inc. (Appellant)
(Respondent)
v.
The Canadian Council of Professional Engineers
(Respondent) (Appellant)
INDEXED AS: CANADIAN COUNCIL OF PROFESSIONAL
ENGINEERS V. LUBRICATION ENGINEERS, INC. (CA.)
Court of Appeal, Hugessen, Desjardins and Décary
JJ.A.—Ottawa, February 11 and 12, 1992.
Trade marks — Registration — Trade mark "Lubrication
Engineers" for use in association with greases, oils and lubri
cants prima facie not registrable under s. /2 as describing rec
ognized occupation or profession — Earlier registration of
trade mark in U.S.A. not making trade mark registrable under
s. 14 — Burden on appellant to .show trade mark "not without
distinctive character" in Canada requiring some evidence
mark has become known so as to distinguish appellant's wares
— Where mark having no inherent distinctiveness, mere evi
dence of use of mark in association with wares and in advertis
ing them insufficient to establish acquired any distinctive char
acter — Trial Judge mistaken in opinion Trade Marks Act, s.
9(1)(d) importing into federal law prohibitions against use of
professional designations in provincial statutes regulating pro
fessions.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 9(1)(d),
12(1)(b), 14.
CASES JUDICIALLY CONSIDERED
APPLIED:
Association of Professional Engineers of the Province of
Ontario v. Registrar of Trade Marks, [1959] Ex.C.R. 354;
(1959), 31 C.P.R. 79.
REFERRED TO:
Park Avenue Furniture Corp. v. Wickes/Simmons Bedding
Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.); Union Carbide
Corp. v. W.R. Grace & Co. (1987), 14 C.I.P.R. 59; 14
C.P.R. (3d) 337; 78 N.R. 124 (F.C.A.).
AUTHORS CITED
Canada. Canadian Classification and Dictionary of Occu
pations. Ottawa: Department of Employment and
Immigration, 1971-1977.
COUNSEL:
Nicholas H. Fyfe, Q.C. for appellant (respon-
dent).
Elizabeth G. Elliott and John S. Macera for
respondent (appellant).
SOLICITORS:
Smart & Biggar, Ottawa, for appellant (respon-
dent).
Macera & Jarzyna, Ottawa, for respondent
(appellant).
The following are the reasons for judgment of the
Court delivered orally in English by
HUGESSEN J.A.: We are all of the view that much of
what the learned Trial Judge said in his lengthy rea
sons for judgment [[19851 1 F.C. 530] cannot be sup
ported. In particular we disagree with his view of the
reach of paragraph 9(1)(d) of the Trade Marks Act
[R.S.C. 1970, c. T-10]; that text simply does not have
the effect, as the Judge seemed to think, of importing
into federal law the various prohibitions against the
use of certain professional designations which are
contained in the provincial statutes regulating those
professions. That said, however, we think that the
result arrived at by the Judge must be supported on
other grounds.
First, we are of the view that the appellant's trade
mark "Lubrication Engineers" for use in association
with greases, oils and lubricants, was not registrable
under section 12 of the Act. The words "Lubrication
Engineers" describe a recognized occupation or pro
fession.' Their use as a trade mark in association with
wares which are themselves intimately associated
with the practice of that occupation or profession
fails to distinguish those wares in any way. In the
words of paragraph 12(1)(b), the trade mark is "either
clearly descriptive or deceptively misdescriptive .. .
I See Canadian Classification and Dictionary of Occupa
tions; see also American Society of Lubrication Engineers,
Constitution.
of the character or quality of the wares ... or the
persons employed in their production." In the same
way as such marks as "Pipefitters" wrenches, "Doc-
tors" thermometers, or "Surveyors" theodolites, the
trade mark "Lubrication Engineers" grease is prima
facie unregistrable. 2 This is the basis of the decision
of the Exchequer Court in the "Finishing Engineers"
case. 3 The Registrar in the present matter wrongly
distinguished that case primarily because of his mis
taken view as to the relevant date as of which he
could consider evidence of the meaning of the words
"Lubrication Engineers" . 4 In any event, the addi
tional evidence on this question, introduced on the
appeal to the Trial Division, now puts the matter
beyond doubt.
Second, the appellant's earlier registration of its
trade mark in the United States, its country of origin,
does not serve to make that trade mark registrable
under section 14 of the Act. Under ,that section the
appellant has the burden of showing that the trade
mark is "not without distinctive character" in Canada.
Whatever that burden may be, 5 it requires at least
some evidence that the mark has become known so as
to distinguish the appellant's wares. In a case such as
this one, where the mark itself has no inherent dis
tinctiveness, mere evidence of the use of the mark in
association with the wares and in advertising them
(such use not even being asserted to have been exclu
sive), without anything more, is not enough to estab
lish that it has acquired any distinctive character.
2 The matter being one of first impression it matters little
that the possessive apostrophe may be omitted, as it is in the
case at bar.
3 See Association of Professional Engineers of the Province
of Ontario v. Registrar of Trade Marks, [1959] Ex. C.R. 354.
4 See Park Avenue Furniture Corp. v. Wickes/Simmons Bed
ding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.), at p. 424.
5 See Union Carbide Corp. v. W.R. Grace & Co. (1987), 14
C.I.P.R. 59 (F.C.A.), at p. 73.
These being the only grounds upon which the
appellant sought to support its trade mark, it follows
that the appeal must be dismissed with costs.
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.