In an appeal from a decision of the Trade-marks Opposition Board, the Court allowed the appeal and rejected the Respondent’s application for the trade-mark REM SURFACE ENGINEERING and Design. At the Opposition, the TMOB rejected the application for the trade-mark REM SURFACE ENGINEERING as deceptively misdescriptive. The Applicant is the national federation of the provincial and territorial associations of professional engineers. The Respondent did not take part in the appeal.
The Court held that the TMOB erred in finding that the mark is not deceptively misdescriptive, and in finding that it is distinctive and registrable, holding that the TMOB did not properly apply s. 12(1)(b) of the Trade-Marks Act. The Court held that the jurisprudence is clear that “when sounded” clearly descriptive or deceptively misdescriptive words cannot be rendered registrable by the addition of design features. The mark is a combination of nondistinctive elements that includes the deceptively misdescriptive words “SURFACE ENGINEERING”. Thus, it cannot be distinctive of any trader.