In Kelly Properties, LLC v. Canadian Council of Professional Engineers, 2013 FCA 287, the MBM litigation team successfully overturned the Federal Court decision of Canadian Council of Professional Engineers v. Kelly Properties, LLC, 2012 FC 1344 which found the trademark KELLY ENGINEERING RESOURCES unregistrable in association with personnel employment services, namely, providing temporary, temporary to full-time, and full-time employees having specialized technical skills, education and/or training.

The recent Federal Court of Appeal decision is important for two reasons:

  1. A trade-mark application based on a foreign registration may register regardless of whether a date of first use claimed in a Canadian trade-mark application is correct; and
  2. Just as a trade-mark which is descriptive is registrable if it is not clearly descriptive - A trade-mark which is potentially misdescriptive is registrable if it is not deceptively misdescriptive.

FOREIGN USE BASIS OF REGISTRATION ALIVE AND STRONG IN CANADA: 

The Federal Court of Appeal solidified that where a trade-mark application is based on use in Canada and foreign use and registration, the two are pleaded in the alternative. That is, only one of the basis of the application must be met for the application to be considered for registration. Therefore, if the application is found to be unsupported on one ground, it may still be registered on the basis of the alternate ground for registration.

DECEPTIVELY MISDESCRIPTIVE NOT TO BE DETERMINED BY GUIDELINES

Each of the Provinces and Territories in Canada include legislation that more or less defines the Practice of Engineering to incorporate the professional application of applied science. The engineering legislation also includes a prohibition of the use of the word engineer/engineering in a trademark if the use may lead the public to believe the trademark owner is engaged in the Practice of Engineering.

Kelly Services sought to register the trademark KELLY ENGINEERING RESOURCES in connection with personnel employment services. The Canadian Council of Professional Engineers opposed registration on the basis that only licensed engineers should be able to use the term “engineering” in a trade-mark. The evidence before the Trade-marks Opposition Board (2010 TMOB 224) demonstrated that Kelly Services is a personnel employment company and its KELLY ENGINEERING RESOURCES division employs and places both engineers and non-engineers with technical training (e.g. draftsmen). However, the Trade-marks Officer determined that personnel employment services would not be the type of technical services that one would expect engineers to provide. As such, the Board found the trade-mark neither clearly descriptive nor deceptively misdescriptive.

The Federal Court agreed with the Trade-marks Officer’s decision that KELLY ENGINEERING RESOURCES was not clearly descriptive of personnel employment services, but found the mark deceptively misdescriptive relying heavily on a non-statutory guideline from the Association of Professional Engineers which provided criteria for when human resource or staffing agencies are allegedly engaged in the Practice of Engineering. The guideline was not before the Trade-marks Officer and the Federal Court concluded that the guideline would have materially affected the decision of the Officer. Thus the Federal Court came to its own conclusion without giving deference to the Trade-marks Opposition Board decision.

The Federal Court of Appeal found the guidelines of the Alberta Association that regulates the profession of engineering to be just that, guidelines and not law. The Court accepted MBM’s argument that the guidelines were merely the opinions of the Alberta Engineering Association and its interpretation was irrelevant for the purpose of trade-mark law. Since all statutes to regulate the term “engineer” were before the Trade-marks Opposition Board, the Court found that the trial judge made a palpable and overriding error in admitting evidence that opined on the scope and the interpretation of those statutes.

The Federal Court of Appeal found that the decision of the Trade-marks Opposition Board was reasonable and confirmed that the trade-mark KELLY ENGINEERING RESOURCES is registrable in association with personnel employment services. The Trade-marks Opposition Board correctly considered the mark as a whole, and recognized the family of KELLY marks used in personnel employment services.

The bottom line is even if one presumed that the mark KELLY ENGINEERING RESOURCES was misdescriptive of personnel employment services (which was not the case), it was clearly not deceptively so.