The recent decision of the Federal Court of Canada in Continental Teves AG & Co. OHG v. Canadian Council of Professional Engineers, 2013 FC 801, is another in a line of decisions from the Federal Court and the Trade-marks Opposition Board (“TMOB”) refusing registration of trademarks with the words “engineer” and “engineering. The decision also provides further commentary about evidence filed to prove the meanings of words, as well as the probative value of expert survey evidence in trademark disputes, without, unfortunately, providing much helpful guidance on how best to show what words mean, and whether they are distinctive or descriptive.

The decision issued from an appeal of the TMOB refusing registration of the words “ENGINEERING EXCELLENCE IS OUR HERITAGE”, filed by Continental Teves (the “Applicant”) for “brake pads for land vehicles, brake rotors for land vehicles”. The TMOB refused registration on the basis that the mark was deceptively misdescriptive and did not distinguish the Applicant’s wares from those of others. Specifically, the Board found that the “average Canadian is as likely, if not more likely, to react to the mark by thinking that professional engineers are involved in the production of the wares.”

On appeal, the Applicant filed additional evidence demonstrating that the Applicant, in fact, employed a substantial number of engineers in the production of the applied-for wares and had done so for many years prior to the Application date. In light of the new evidence, Justice Hughes, writing for the Court, upheld the TMOB’s decision to refuse the application, on the basis that the phrase was, in fact, clearly descriptive, rather than deceptively misdescriptive, of the applied-for wares, namely, of the persons employed (“engineers”) in the production of the wares. While not commenting upon it, the Judge apparently considered the mark as a whole, ENGINEERING EXCELLENCE IS OUR HERITAGE, as clearly descriptive given his findings about the meaning of the word ENGINEERING. While normally, adding other words will not convert a deceptively misdescriptive mark into a registrable mark, adding other words/designs to descriptive words can make the whole mark registrable. The Judge did not address the impact of other words in the mark, and instead, found the whole mark to be clearly descriptive.

This decision follows a steady line of decisions holding marks with the words “engineer” or “engineering” to be unregistrable since they imply that the wares sold or services rendered are those of Canadian licensed engineers. If real “engineers” are involved, the mark may be clearly descriptive, as it was here, and if they aren’t, the mark may be deceptively misdescriptive. The Judge did not address this apparent Catch 22. Accordingly, potential applicants of such marks should beware, and anticipate likely objections to such marks.

This case is also notable for its commentary regarding the use of evidence to prove the meaning of words, and by implication, whether the mark is distinctive or descriptive. Evidence from the internet and library references on the meanings of “engineer” and “engineering” had been filed, along with state of the Register evidence, showing other marks with these words. No survey evidence was filed.

The Judge characterized the filed evidence as “fragments”, leaving the Court to determine distinctiveness or descriptiveness “with the lawyers for the parties adding their rhetoric in an endeavor to pull the decision-maker this way or that”. He noted that the Applicant had failed to submit evidence as to “what members of the public in Canada actually think when confronted with the use of words such as ‘engineering’ and the like”. However, in terms of how to file that evidence, he apparently thought surveys were not the answer. Specifically, he noted: “there are many ways besides expensive surveys in which the Court may be informed as to actual public reaction”, adding that the use of surveys has been “correctly disparaged” by the Supreme Court of Canada in Masterpiece v. Alavida Lifestyles Inc., [2011] 2 S.C.R. 387 (“Masterpiece”).

This is the second decision from Justice Hughes in the space of two weeks referring to the discussion in the Masterpiece decision of survey evidence in trademark cases. In Masterpiece, Justice Rothstein, while emphasizing the need for caution in relation to survey evidence, stated that surveys “have the potential to provide empirical evidence which demonstrates consumer reactions in the marketplace — exactly the question that the trial judge is addressing in a confusion case” [at para. 93].

Notwithstanding the foregoing, the Masterpiece decision has been widely viewed as having a chilling effect on the use of survey evidence in trademark disputes, and the recent decisions commenting on the probative value of such evidence demonstrates that there may be a tendency by Canadian courts to ignore the nuances of Justice Rothstein’s words, and to interpret Masterpiece as indicating only disapproval of survey evidence.

While the Judge’s comments in the Continental Teves decision about survey evidence are obiter only, (none having been filed), they signal the Federal Court’s continued reluctance to attach substantial, if any, weight to survey evidence. While the decision is a useful reminder of the need to carefully assess evidence designed to prove the meanings of words in opposition and court proceedings, it is not helpful in guiding how best to do so. Instead, the judge both criticized evidence gathered from the internet and libraries, and also suggested that evidence should be filed to show what members of the public actually think, with no suggestions on how best to do so.