WHAT IS NOT A TRADE MARK?

WHAT IS NOT A TRADE MARK?
by
Hugues G. Richard
LEGER ROBIC RICHARD, Lawyers
ROBIC, Patent & Trademark Agents
Centre CDP Capital
1001 Square-Victoria - Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel.: (514) 987 6242 - Fax: (514) 845 7874
www.robic.ca - [email protected]
This is what the Federal Court of Canada, Trial Division, had to decide in the
matter involving The Life Underwriters Association of Canada -vs- The
Provincial Association of Québec Life Underwriters (Court No T-2-88, judgment
dated June l4, l988). In that case, the Court held, among other things, that:
(a) an expression which is used in association with persons, (b) a professional
title, and (c) a generic word, are not trade marks within the meaning of the
Trade Marks Act.
The Life Underwriters' Association of Canada was seeking an order enjoining
the Provincial Association of Québec Life Underwriters from using the
expressions "CLU" (Chartered Life Underwriter) and its French equivalent "AVA"
(Assureur-vie agréé) which it had registered as certification marks.
The Court found that the evidence had revealed that the expressions "CLU"
and "AVA" had not been used as trade marks since they had not been used in
association with wares or services but rather in association with persons.
According to Section 2 of the Trade Marks Act, a trade mark means, inter alia,
(a) a mark that is used by a person for the purpose of distinguishing or so as to
distinguish wares or services manufactured, sold, leased, hired or performed
by him from those manufactured, sold, leased, hired or performed by others
or, (b) a certification mark; a certification mark means, inter alia, a mark that is
used for the purpose of distinguishing or so as to distinguish wares or services
that are of a defined standard with respect to the class of persons by whom
the wares have been produced or the services performed.
The Court found that the evidence showed that the expressions "CLU" and
"AVA" had been used in association with persons and not their services; they
could therefore not be considered as valid certification marks.
Furthermore, the Court decided that inasmuch as these expressions could be
said to be professional titles used by a certain class of persons, they were a
matter of exclusive provincial concern. In Canada, professions are under
provincial jurisdiction. The Quebec legislature, in its Insurance Act, conferred
on the Provincial Association of Quebec Life Underwriters the right to approve
the use by insurance agents of the expressions "CLU" and "AVA" within the
province. The Court held that Federal legislation (the Trade Marks Act) could
not encroach on this domain.
The Court also considered the manner in which the expressions "CLU" and
"AVA" had been used by the Life Underwriters' Association of Canada. The
documentation of Plaintiff teemed with "genericidal"" expressions such as "the
chartered life underwriter is competent", "the "AVA" is a professional", and so
an: in short use of the expressions as generic expressions: an unforgivable
crime. The Court concluded that the use of the expressions was not use as
trade marks but as a generic expressions. Inasmuch as the expressions could
ever have been trade marks, the Court found that the Life Underwriters'
Association of Canada had committed the fatal error of genericide by the
manner in which it had used the said expressions.
The case is now before the Federal Court of Appeal. It will be interesting to
learn whether or not the Federal Parliament can, through its legislative power
to regulate trade and commerce in Canada, limit or even bar a province
from adopting valid legislation to regulate professions within its territory. Many
other issues will be argued before the Court of Appeal which are fundamental
to the interpretation to be given to the Trade Marks Act in the context of the
Federal Canadian legal system. Furthermore, we will know, for certain, what is
not a trade mark. This is a case to be watched.
Published at (1988), 2 W.I.P.R. 195-196 under the title Expressions "CLU" and
"AVA" Are Not Trademarks, Court Rules.
© LEGER ROBIC RICHARD / ROBIC, 1988.
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