A recent decision of the Trade-marks Opposition Board shows how the distinctiveness of a trade-mark can change and affect the outcome of an opposition.

Round One

In January of 1999, Kelly Properties, Inc. filed an application to register the trade-mark KELLY ENGINEERING RESOURCES. The application was based on proposed use of the trade-mark in Canada in association with personal employment services. The applicant disclaimed the words ENGINEERING RESOURCES apart from the trade-mark.

The application was opposed by the Canadian Council of Professional Engineers.

Numerous grounds of opposition were raised but the primary grounds were that:

  1. The alleged trade-mark was clearly descriptive or deceptively misdescriptive of the character or quality of the services in association with which it was proposed to be used or the conditions of or the persons employed in their production;
  2. The trade-mark was not distinctive since it was not adapted to distinguish nor does it distinguish the services in association with which it was proposed to be used from the services of others, including engineers with the surname “Kelly” and entities that are lawfully registered to practise engineering in Canada.

The Hearing Officer stated that the issue of whether a mark is clearly descriptive must be considered from the point of view of the average purchaser of the services. The mark must not be dissected into its component elements and carefully analysed but must be considered in its entirety as a matter of first impression. It was concluded that the mark, being a combination of a name and descriptive words was in its entirety not clearly descriptive of the character or the quality of the services. In addition, it was concluded that the mark as a whole was not clearly descriptive of the conditions of the persons employed in the production of the services.

With respect to the non-distinctiveness ground, the hearing officer referred to cases that had established that a trade-mark that consists of a surname and a descriptive term is not distinctive because such a mark as a whole is not adapted to distinguish the services of the applicant from the like services of others bearing the same surname.

Whether KELLY was viewed as a surname or a first name, it was found that the applicant’s mark, being a combination of a name and a non-distinctive term, was not inherently adapted to distinguish the services of the applicant from similar services of others who also bear the name “Kelly”. In addition, the applicant’s evidence did not allow the hearing officer to conclude that the mark had acquired distinctiveness in Canada. As a result the application was dismissed.

Round Two

Undaunted by this adverse decision, the applicant continued to widely use its mark in Canada and subsequently filed a trademark application in June of 2004 for the same mark in association with the same services based on use in Canada since April 1999. The application was opposed a grounds of opposition similar to the grounds in the first opposition.

Both parties filed substantial evidence similar to that filed in the previous opposition but the applicant filed evidence to show that the applied-for mark had been widely used in Canada in association with the applied for services.

As in the case of the initial opposition, the Hearing Officer in this opposition also concluded that the applied-for mark was not clearly descriptive. The Hearing Officer emphasised that the mark related to services that the public would not expect to be provided by engineers and ENGINEERING was not a significant part of the mark.

The material date to determine the non-distinctiveness ground of opposition was the date of the filing of the statement of opposition, which occurred in February of 2005.

The Hearing Officer referred to the evidence filed by the applicant which established that employment services had been provided and advertised in Canada in association with the word KELLY. The evidence also showed that significant sums had been spent on advertising and marketing. As a result it was found that ample evidence had been filed to show that KELLY had acquired distinctiveness such that the mark as a whole functioned to distinguish the services of the applicant from similar services of others. In light of this conclusion the opposition was dismissed and the application allowed.

Comment

The case show that the distinctiveness of a trade-mark can change with time. A mark which is not inherently distinctive may acquire distinctiveness through use. Conversely, a mark which was distinctive can lose its distinctiveness through misuse or mismanagement.