Federal Court takes hard look at scope of protection available to official mark

John McKeown is counsel at Goldman, Sloan, Nash and Haber LLP in Toronto.

A decision of the Federal Court has considered the scope of protection available for official marks. In this case the Court was not prepared to give the mark a significant degree of protection. Chartered Professional Accountants of Ontario v. American Institute of Certified Public Accountants 2021 FC 35

The Facts

Chartered Professional Accountants of Ontario (CPA Ontario), controls the use of the professional accounting designation CPA in the province of Ontario. The accounting profession in Canada is provincially regulated, and this includes control over the professional designations used by accountants in the province.

Before 2014, legacy designations—for example, CA (Chartered Accountant) and CMA (Certified Management Accountant)—were controlled by separate organizations, and the ability to use a particular designation depended on an accountant's qualifications and membership status. In 2012 it was decided to make CPA a core designation for its members, and because of the unification efforts, the other two regulatory organizations allowed their members to use the CPA designation in 2014.

Following a 2017 amalgamation, CPA Ontario became responsible for controlling the use of CPA as an accounting designation in the province. CPA Ontario became the owner of all rights to the official mark CPA, which was published on December 29, 2010 at the request of CPA Ontario's predecessor.

The primary accounting designation licensed in the United States is the CPA designation, which stands for “Certified Public Accountant”. The American Institute of Certified Public Accountants (AICPA) is an association that represents the Certified Public Accounting profession in the U.S. regarding rule-making and standard setting, and it serves as an advocate before legislative bodies, public interest groups, and other professional organizations.

The U.S. accounting designation CPA has been used for decades. Even Canadian individuals who qualify have been able to use the U.S. CPA designation for many years, well before it was decided to make CPA a core designation for Ontario accountants in 2012, and well before efforts to transition to a single accounting designation in Ontario began in 2014.

Application no. 1,512,864 for the mark THIS WAY TO was filed in Canada on January 27, 2011 by AICPA. Other related applications were also filed by AICPA

The Opposition

CPA Ontario opposed registration of the Application on several grounds including non registrability under s. 12(1)(e). The Opposition was decided under the Trademarks Act as it read immediately before June 17, 2019.

The Opposition was one of twenty related oppositions before the Board involving thirteen trademark applications. The related oppositions were heard by the same hearing officer in February 2019. AICPA and CPA Ontario were the applicant and opponent, respectively, in eight of them. 

The Hearing Officer's Decision

The Hearing Officer said that the official mark CPA could not benefit from a wider scope of protection derived from an alleged family of official marks as there is no evidence of use of any of them in the record.

Acronyms made of letters of the alphabet are only entitled to a narrow ambit of protection and this general principle, widely known in trademark law, should equally apply to official marks.

Applying these principles, the words THIS WAY TO at the beginning of the applied for mark made it not identical to the official mark CPA and the mark did not so nearly resemble to CPA mark so as to be likely to be mistaken for it.

The Appeal

The only issue on appeal was the ground of opposition that the mark was not registerable in Canada under subsection 12(1) (e) of the Act. CPA Ontario filed no additional evidence.

Section 9(1)(n)(iii) states that no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of or so nearly resembling as to be likely to be mistaken for an official mark.  “Consisting of” means “identical to”. As the mark was not identical to CPA's official mark, the question was whether the mark so nearly resembled CPA's mark as to be likely to be mistaken for it.

Whether a mark is likely to be mistaken for an official mark is not a test of straight comparison, but rather one of resemblance and imperfect recollection.  Imperfect recollection means the question is approached from the perspective of a notional person familiar with the official mark, but with an imperfect recollection of it. 

The test for likely resemblance to an official mark includes a consideration of resemblance between the marks in appearance or sound or in the ideas suggested by them.  Resemblance is one consideration for assessing confusion between trademarks, under the test set out in section 6(5) of the Trademarks Act. However, other considerations under the section 6(5) test, including the goods or services with which the trademarks are used, are not relevant to assessing whether a mark is likely to be mistaken for an official mark.

The Judge was not persuaded that the Hearing Officer applied a different test for resemblance than the one stated above, or that he ignored the dominant aspect of the marks when assessing whether the mark so nearly resembled as to be likely to be mistaken for CPA Ontario's official mark. CPA Ontario did not establish an extricable question of law that warranted review of the TMOB's determination on the correctness standard, and the proper standard of review was palpable and overriding error.

The Judge was also satisfied that the hearing officer had made no palpable and overriding error of mixed fact and law. The official mark CPA, which consists of letters of the alphabet, does not convey an apparent or “inherent” meaning of its own, and does not inherently suggest an idea. If CPA become known as a Canadian accounting designation as of the material date, CPA Ontario had to establish its meaning through evidence. Similarly, the evidence did not establish that the element CPA within the Mark THIS WAY TO CPA connects to or points to the Ontario accounting designation CPA, which CPA Ontario controls, rather than to the U.S. accounting designation CPA.

CPA Ontario did not refer the court to any evidence establishing the meaning of its official mark, prior to the material date for assessing the section 12(1)(e) ground of opposition. And even had CPA established that term CPA has meaning as a Canadian accounting designation, independent and apart from what the acronym stands for, there was no evidence to establish that the CPA element of AICPA's Mark would be understood to mean the Canadian accounting designation rather than the U.S. accounting designation.

The Judge was not convinced that the Hearing officer had made a palpable and overriding error in concluding that the CPA mark was an acronym made up of letters of the alphabet and entitled to a narrow ambit of protection and that the words THIS WAY TO at the beginning of AICPA's Mark rendered it not so nearly resembling CPA as to be likely to be mistaken for it.

Comment

This is the first decision to the writer's knowledge to emphasis the lack of inherent distinctiveness of an official mark and require its owner to present evidence of acquired distinctiveness. Similar considerations apply to the concept that official marks consisting of acronyms made of letters of the alphabet are only entitled to a narrow ambit of protection and this general principle, widely known in trademark law, should equally apply to official marks.

John McKeown is counsel at Goldman, Sloan, Nash and Haber LLP in Toronto. This article was originally published by Lawyer's Daily, March 2021 and is reprinted with the permission of John McKeown. Access the decision in Chartered Professional Accountants of Ontario v. American Institute of Certified Public Accountants 2021 FC 35 here. Top image by Michael Schwarzenberger from Pixabay.