Denturist Group of Ontario v. Denturist Association of Canada, 2014 FC 989

The Applicant, the Denturist Group of Ontario (“DGO”) was seeking declaratory, injunctive and monetary relief against the Respondents (the Denturist Association of Canada (“DAC”) and the Denturist Association of Ontario (“DAO”)) to invalidate the DAC’s registered copyrights and certification mark, “DD”. The DAC owns four (4) copyright registrations that relate to “Denturism Codes” (the “DAC Copyright Registrations”), which identify the services denturists use when submitting claims to insurance companies or third party payers. The DAC was also granted a trade-mark registration for the certification mark “DD” for denturist services. The DAC’s members may use the mark, and others (non-members) may pay a fee to use it. The DGO was established as a cost-effective alternative organization to the DAO, and the DAO/DAC view the DGO as a competitor for membership fees. The Respondents attempted to pursue the DGO for the payment of “non-member” fees claiming copyright in certain Denturism Codes and fee guides used for billing, and for the right to use the professional designation “DD”.

The Court considered a number of issues in this case, namely: (1) whether copyright subsists in the works covered by the DAC Copyright Registrations (e.g. the DAC Procedural and Fee Guides); (2) whether copyright subsists in the 5-digit codes (and corresponding descriptions of denturist services covered by several of the DAC Copyright Registrations); (3) whether the DGO infringed copyright in the DAC Copyright Registrations; and (4) whether the “DD” certification mark is valid (clearly descriptive or non-distinctive).

First, the Court held that the DAC is the owner of the DAC Procedural and Fee Guides, and that copyright subsists in the DAC Copyright Registrations. However, the Court held that copyright does not subsist in the 5-digit codes (and corresponding descriptions) on the basis of insufficient originality or skill and judgment, and, as a result, that the DGO has not infringed the DAC’s copyright in the DAC Procedural and Fee Guides. Furthermore, the evidence before the Court was not sufficient to establish that the “DD” certification mark was clearly descriptive, but it did establish that it was not distinctive of the DAC and its licensees as of the relevant date. Accordingly, while the DGO members have used the “DD” designation, the Court held that it was not an infringement to do so.

Therefore, the DGO’s application to strike the DAC Copyright Registrations was dismissed, the DGO was held not to have infringed the copyright owned by the DAC, and the “DD” certification mark was invalidated and struck from the Register of Trademarks. The Court refused to award aggravated punitive or exemplary damages, but awarded damages to DGO in the amount of $10,000. Costs were also awarded to DGO.