College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada, (2009) 355 F.T.R. 11 (FC)

• Judge: O'Keefe, J.
• Court: Federal Court (Canada)
• Case Date: Thursday October 29, 2009
• Jurisdiction: Canada (Federal)
• Citations: (2009), 355 F.T.R. 11 (FC);2009 FC 1110

College of Chinese Medicine v. Natural Medicine (2009), 355 F.T.R. 11 (FC)

MLB headnote and full text

Temp. Cite: [2009] F.T.R. TBEd. NO.023

College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia (plaintiff) v. Council of Natural Medicine College of Canada (defendant)

(T-1810-07; 2009 FC 1110)

Indexed As: College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada

Federal Court

O'Keefe, J.

October 29, 2009.

Summary:

The plaintiff, the College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia, commenced an action for a permanent injunction to stop the defendant, the Council of Natural Medicine College of Canada, from adopting, using, licensing and otherwise authorizing others to use certain abbreviations and words in association with educational training, certification and registration services, the operation of a traditional Chinese medicine or acupuncture clinic, and the practice of traditional Chinese medicine and acupuncture (see paragraph 2 for list). The plaintiff also sought an order requiring the defendant to deliver up all offending materials, a declaration that the registrations for certain trademarks were invalid and should be expunged, a reference to determine the defendant's profits or in the alternative general damages, plus an award of interest and costs. The plaintiff brought a motion for summary judgment.

The Federal Court granted summary judgment in favour of the plaintiff.

Courts - Topic 4048

Federal Court of Canada - Jurisdiction - Federal Court - Trademarks - The plaintiff, the College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia (CTCMA), was a regulatory body created by provincial legislation, to regulate traditional Chinese medicine and acupuncture in British Columbia - The defendant, the Council of Natural Medicine College of Canada (CNMCC), was incorporated as a non-profit company, under federal legislation, to regulate educational programs and examinations in the field of traditional Chinese medicine and acupuncture - The plaintiff sued the defendant for a permanent injunction to stop the defendant from adopting, using, licensing and otherwise authorizing others to use certain abbreviations and words as trademarks and titles - The plaintiff also sought delivery up all offending materials, declaratory relief respecting certain trademarks, a reference respecting profits or damages, etc. - The plaintiff moved for summary judgment - An issue arose as to whether the court had jurisdiction to hear the motion - The defendant claimed that the plaintiff's complaints should be dealt with under s. 52 of the Health Professionals Act (B.C.), rather than as a federal trademarks action - The Federal Court held that there were legitimate trademark issues raised on the plaintiff's summary judgment motion; therefore, the matter was properly before the court under s. 20 of the Federal Courts Act (i.e., the exclusive jurisdiction over industrial property) - See paragraphs 187 to 191.

Courts - Topic 4074

Federal Court of Canada - Jurisdiction - Federal Court - Practice - Summary judgment proceedings - [See Courts - Topic 4048].

Estoppel - Topic 1161

Estoppel in pais (by conduct) - Representation - By conduct - Acquiescence - The plaintiff, the College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia (CTCMA), was a regulatory body created by provincial legislation, to regulate traditional Chinese medicine and acupuncture in British Columbia - The defendant, the Council of Natural Medicine College of Canada (CNMCC), was incorporated as a non-profit company, under federal legislation, to regulate educational programs and examinations in the field of traditional Chinese medicine and acupuncture - The plaintiff sued the defendant for a permanent injunction to stop the defendant from adopting, using, licensing and otherwise authorizing others to use certain abbreviations and words as trademarks and titles - The plaintiff also sought delivery up all offending materials, declaratory relief respecting certain trademarks, a reference respecting profits or damages, etc. - The plaintiff moved for summary judgment - The defendant claimed that the plaintiff was estopped from proceeding with its motion because it had commenced an opposition to the trademarks and then did not proceed - The Federal Court held that the delay here was not excessive - The plaintiff's extension of time to file a statement of opposition expired in April 2007 and it commenced this action on October 12, 2007 - See paragraphs 192 to 195.

Practice - Topic 5702

Judgments and orders - Summary judgments - Jurisdiction or when available or when appropriate - The Federal Court referred to a statement of the general principles with respect to summary judgment - See paragraph 197.

Practice - Topic 5702

Judgments and orders - Summary judgments - Jurisdiction or when available or when appropriate - The plaintiff, the College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia (CTCMA), was a regulatory body created by provincial legislation, to regulate traditional Chinese medicine and acupuncture in British Columbia - The defendant, the Council of Natural Medicine College of Canada (CNMCC), was incorporated as a non-profit company, under federal legislation, to regulate educational programs and examinations in the field of traditional Chinese medicine and acupuncture - The plaintiff sued the defendant for a permanent injunction to stop the defendant from adopting, using, licensing and otherwise authorizing others to use certain abbreviations and words as trademarks and titles - The plaintiff also sought delivery up of all offending materials, declaratory relief respecting certain trademarks, a reference respecting profits or damages, etc. - The plaintiff moved for summary judgment - The Federal Court held that this was an appropriate case to be determined pursuant to Federal Courts Rule 216 (i.e., there was no genuine issue for trial therefore summary judgment should be granted accordingly) - See paragraphs 196 to 205.

Practice - Topic 5702

Judgments and orders - Summary judgments - Jurisdiction or when available or when appropriate - [See Courts - Topic 4048].

Practice - Topic 5712

Judgments and orders - Summary judgments - Application or motion (incl. time for) - The plaintiff commenced trademark litigation against the defendant, referencing a number of trademarks in its statement of claim - The plaintiff then moved for summary judgment, raising an issue with 24 more trademarks - The defendant claimed that it did not have the opportunity to draft specific defences to the additional trademarks in the time between when the notice of motion for summary judgment was filed and the court hearing - The defendant argued that the plaintiff should have amended its statement of claim as the trademarks the plaintiff sought to enjoin were material facts - The Federal Court stated that it was in agreement with the defendant on this issue; therefore, the additional 24 trademarks would not be considered on the summary judgment motion - See paragraphs 207 to 210.

Trademarks, Names and Designs - Topic 261

Trademarks - What trademarks registrable - Prohibition - Marks which are descriptive of the product - The plaintiff, the College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia (CTCMA), was a regulatory body created by provincial legislation - The defendant, the Council of Natural Medicine College of Canada (CNMCC), was incorporated as a non-profit company, under federal legislation, to regulate educational programs and examinations in the field of traditional Chinese medicine and acupuncture - The defendant registered a number of trademarks for abbreviations and titles (e.g., D.T.C.M. (Doctor of Traditional Chinese Medicine)) (see complete list in paragraph 2) - The plaintiff sued the defendant, seeking to have the trademarks declared invalid - The plaintiff moved for summary judgment, arguing that a series of trademarks that consisted of initials followed by a phrase in parentheses that described either an occupation or a degree were clearly descriptive and therefore invalid (Trade-marks Act, s. 12(1)(b)) - The Federal Court stated that the acronyms were not distinguishable because of the type of descriptive phrase dominating the mark - The court held that all of the marks in the statement of claim clearly described or deceptively misdescribed wares or services associated with the practice of traditional Chinese medicine and did not adequately distinguish the wares or services of the defendant - Since the trademarks were not registrable at the date of registration under s. 12(1)(b), the marks were invalid under s. 18(1)(a) - For the same reasons as in its s. 12(1)(b) analysis, the court found that the trademarks were not distinctive as required by s. 18(1)(b) - See paragraphs 211 to 221 and 231 to 236.

Trademarks, Names and Designs - Topic 262

Trademarks - What trademarks registrable - Prohibition - Marks which are deceptively misdescriptive - [See Trademarks, Names and Designs - Topic 261].

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - [See Trademarks, Names and Designs - Topic 261].

Trademarks, Names and Designs - Topic 888

Trademarks - Registration - Expungement of mark - Grounds - Exceptions - Laches or acquiescence - [See Estoppel - Topic 1161].

Trademarks, Names and Designs - Topic 3065

Trademarks - Unfair competition - Confusing advertising - The plaintiff, the College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia (CTCMA), was a regulatory body created by provincial legislation - The defendant, the Council of Natural Medicine College of Canada (CNMCC), was incorporated as a non-profit company, under federal legislation, to regulate educational programs and examinations in the field of traditional Chinese medicine and acupuncture - The defendant registered a number of trademarks for abbreviations and titles (e.g., D.T.C.M. (Doctor of Traditional Chinese Medicine)) (see complete list in paragraph 2) - The plaintiff sued the defendant, seeking to have the trademarks declared invalid - The plaintiff moved for summary judgment, arguing that the defendant was guilty of misleading the public (Trade-marks Act, s. 7(d)) - The Federal Court held that the plaintiff had presented evidence that the defendant was making use of the descriptions of their trademarks in a manner that was misleading the public as to the character of the trademarks which created confusion in the public - See paragraphs 239 to 245.

Trademarks, Names and Designs - Topic 4411

Trademarks - Practice - Summary judgments - [See Courts - Topic 4048, second Practice - Topic 5702 and Practice - Topic 5712].

Cases Noticed:

Granville Shipping Co. v. Pegasus Lines Ltd. S.A. et al., [1996] 2 F.C. 853; 111 F.T.R. 189 (T.D.), refd to. [para. 31].

Lubrication Engineers Inc. v. Canadian Council of Professional Engineers, [1992] 2 F.C. 329; 140 N.R. 318 (F.C.A.), refd to. [para. 33].

Atlantic Promotions Inc. v. Registrar of Trademarks (1984), 2 C.P.R.(3d) 183 (F.C.T.D.), refd to. [para. 33].

Wool Bureau of Canada Ltd. v. Registrar of Trademarks (1978), 40 C.P.R.(2d) 25 (F.C.T.D.), refd to. [para. 33].

Bank of Montreal v. Midland Walwyn Capital Inc./Capital Midland Walwyn Inc. (1998), 86 C.P.R.(3d) 555 (T.M. Opp. Bd.), refd to. [para. 56].

Canadian Olympic Association v. Allied Corp. and Registrar of Trademarks (1990), 105 N.R. 388; 28 C.P.R.(3d) 161 (F.C.A.), refd to. [para. 56].

Canadian Olympic Association v. Olympus Optical Co. (1991), 136 N.R. 231; 38 C.P.R.(3d) 1 (F.C.A.), refd to. [para. 56].

Canada Post Corp. v. Post Office (2000), 15 C.P.R.(4th) 267 (T.M. Opp. Bd.), refd to. [para. 57].

Big Sisters Association of Ontario et al. v. Big Brothers of Canada (1997), 131 F.T.R. 161; 75 C.P.R.(3d) 177 (T.D.), refd to. [para. 58].

Leco Industries Ltd. v. Grace (W.R.) & Co. (1980), 62 C.P.R.(2d) 102 (T.M. Opp. Bd.), refd to. [para. 125].

Patou (Jean) Inc. v. Luxo Laboratories Ltd. (1998), 158 F.T.R. 16 (T.D.), refd to. [para. 129].

ITV Technologies Inc. v. WIC Television Ltd. (2003), 239 F.T.R. 203; 29 C.P.R.(4th) 182 (T.D.), affd. (2005), 332 N.R. 1; 38 C.P.R.(4th) 481 (F.C.A.), refd to. [para. 153].

Fiesta Barbeques Ltd. v. General Housewares Corp. (2003), 239 F.T.R. 99; 28 C.P.R.(4th) 60; 2003 FC 1021, refd to. [para. 154].

Co-operative Union v. Tele-Direct (Publications) Inc. (1991), 38 C.P.R.(3d) 263 (T.M. Opp. Bd.), refd to. [para. 167].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al. (2000), 252 N.R. 91; 5 C.P.R.(4th) 180 (F.C.A.), refd to. [para. 169].

Canadian Council of Professional Engineers v. Oyj (2008), 68 C.P.R.(4th) 228 (T.M. Opp. Bd.), refd to. [para. 170].

Canadian Council of Professional Engineers v. APA - The Engineered Wood Association (2000), 184 F.T.R. 55; 7 C.P.R.(4th) 239 (T.D.), refd to. [para. 170].

Techniquip Ltd. v. Canadian Olympic Association (1998), 145 F.T.R. 59; 80 C.P.R.(3d) 225 (T.D.), affd. (1999), 250 N.R. 302; 3 C.P.R.(4th) 298 (F.C.A.), refd to. [para. 173].

Radulescu v. Toronto District School Board et al., [2004] O.T.C. Uned. B62; 137 A.C.W.S.(3d) 273 (Sup. Ct. Master), refd to. [para. 178].

Camiceria Pancaldi & B S.r.l v. Cravatte Di Pancaldi S.r.l., [2007] WL 2288462 (T.M. Opp. Bd.), refd to. [para. 178].

MacNeil et al. v. Canada (Minister of Indian Affairs and Northern Development), [2004] 3 F.C.R. 3; 316 N.R. 349; 2004 FCA 50, refd to. [para. 181].

R. v. G.S. (1988), 31 O.A.C. 161; 67 O.R.(2d) 198 (C.A.), affd. [1990] 2 S.C.R. 294; 107 N.R. 217; 41 O.A.C. 269, refd to. [para. 182].

Alticor Inc. et al. v. Nutravite Pharmaceuticals Inc. (2004), 247 F.T.R. 85; 31 C.P.R.(4th) 12; 2004 FC 235, refd to. [para. 194].

Canadian Memorial Services v. Personal Alternative Funeral Services Ltd. et al. (2000), 182 F.T.R. 28; 4 C.P.R. (4th) 440 (T.D.), refd to. [para. 194].

Granville Shipping Co. v. Pegasus Lines Ltd. S.A. et al., [1996] 2 F.C. 853; 111 F.T.R. 189 (T.D.), refd to. [para. 197].

Inhesion Industrial Co. v. Anglo Canadian Mercantile Co., [2000] F.T.R. Uned. 354 (T.D.), refd to. [para. 198].

Apotex Inc. v. Merck & Co. et al., [2003] 1 F.C. 242; 291 N.R. 96; 2002 FCA 210, refd to. [para. 199].

Astral Media Radio Inc. et al. v. Society of Composers, Authors and Music Publishers of Canada et al. (2008), 336 F.T.R. 1; 2008 FC 1198, refd to. [para. 200].

Tender Loving Things Inc. et al. v. Doctor Joy (1995), 66 C.P.R.(3d) 12 (F.C.T.D. Protho.), refd to. [para. 209].

Canadian Council of Professional Engineers v. Management Engineers GmbH, [2004] T.M.O.B. No. 119, refd to. [para. 218].

Northwest Territories v. Sirius Diamonds Ltd. et al. (2001), 208 F.T.R. 7; 13 C.P.R.(4th) 486; 2001 FCT 702, refd to. [para. 225].

Natural Waters of Viti Ltd. et al. v. C.E.O. International Holdings Inc. et al. (2000), 190 F.T.R. 300; 5 C.P.R.(4th) 321 (T.D. Protho.), refd to. [para. 243].

Authors and Works Noticed:

British Columbia, Minister of Health Report, Safe Choices: A New Model for Regulating Health Professions in British Columbia, generally [para. 61].

Sullivan, Ruth, Sullivan and Driedger on the Construction of Statutes (4th Ed. 2002), pp. 487, 488 [para. 182].

Counsel:

Christopher S. Wilson and Ryan Austin, for the plaintiff;

Joanne Kuroyama, for the defendant.

Solicitors of Record:

Bull Housser & Tupper, Vancouver, British Columbia, for the plaintiff;

Gowling Lafleur Henderson, LLP, Vancouver, British Columbia, for the defendant.

This matter was heard at Vancouver, British Columbia, on March 25 and 26, 2009, before O'Keefe, J., of the Federal Court, who delivered the following reasons for judgment on October 29, 2009.