Engineers Canada appealed from a Trademarks Opposition Board (TMOB) decision refusing its opposition to the mark POLARTEC ECO-ENGINEERING DESIGN (the Mark). The Federal Court held that the appeal was moot, and declined to exercise its discretion to hear it.
Engineers Canada had argued that as the respondent was not registered to practice engineering, and does not employ licensed engineers, the Mark was deceptively misdescriptive. The TMOB disagreed, and also held that the Mark was distinctive. However, while the appeal was pending, the Respondent withdrew its application for registration of the Mark, and moved to have the appeal dismissed for mootness. Engineers Canada did not consent to the motion. The Respondent indicated it would not appear at the hearing of the motion.
Engineers Canada argued that the withdrawal of the application does not equate to abandonment of the Mark, and thus, the Respondent may still use the Mark. However, the Court held that this argument had been previously considered and dismissed in a similar decision. Furthermore, if a court order is required, the Applicant can bring a trademark infringement action.