Teachers' Pension Plan Board (Ont.) v. Canada (Attorney General), (2012) 427 N.R. 328 (FCA)

• Judge: Blais, C.J., Nadon and Dawson, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: October 24, 2012
• Jurisdiction: Canada (Federal)
• Citations: (2012), 427 N.R. 328 (FCA);2012 FCA 60

Teachers Pension Plan Bd. v. Can. (A.G.) (2012), 427 N.R. 328 (FCA)

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Temp. Cite: [2012] N.R. TBEd. MR.014

Ontario Teachers Pension Plan Board (appellant) v. The Attorney General of Canada (respondent)

(A-75-11; 2012 FCA 60; 2012 CAF 60)

Indexed As: Teachers' Pension Plan Board (Ont.) v. Canada (Attorney General)

Federal Court of Appeal

Blais, C.J., Nadon and Dawson, JJ.A.

February 21, 2012.

Summary:

The applicant, the Ontario Teachers' Pension Plan Board, administered the Ontario Teachers' Pension Plan. The applicant applied to register the mark TEACHERS'. The Registrar refused to registrar the mark, finding that it was an apt trade term describing the intrinsic character of the administration, management and investment of a pension fund for teachers which should be left available for others to use; therefore it was not registrable under s. 12(1)(b) of the Trade-marks Act. The applicant appealed under s. 56(1) and filed new evidence.

The Federal Court, in a decision reported at 382 F.T.R. 237, admitted the new evidence and dismissed the appeal. The applicant appealed.

The Federal Court of Appeal dismissed the appeal.

Trademarks, Names and Designs - Topic 261

Trademarks - What trademarks registrable - Prohibition - Marks which are descriptive of the product - The applicant, the Ontario Teachers' Pension Plan Board, administered the Ontario Teachers' Pension Plan - The applicant applied to register the mark TEACHERS' - The Registrar refused, finding that TEACHERS' was an apt trade term describing the intrinsic character of the administration, management and investment of a pension fund for teachers which should be left available for others to use - Therefore it was not registrable under s. 12(1)(b) of the Trade-marks Act - The applicant appealed under s. 56(1) and filed new evidence - The Federal Court admitted the new evidence and considered the matter anew - The court agreed with the Registrar's decision and dismissed the appeal - The applicant appealed - The Federal Court of Appeal dismissed the appeal - The judge did not err in concluding that the trademark was clearly descriptive of the character of the services in association with which the applicant used the trademark.

Trademarks, Names and Designs - Topic 701.2

Trademarks - Registration - General - Jurisdiction - General - The applicant, the Ontario Teachers' Pension Plan Board, administered the Ontario Teachers' Pension Plan - The applicant applied to register the mark TEACHERS' - The Registrar refused to registrar the mark, finding that it was an apt trade term describing the intrinsic character of the administration, management and investment of a pension fund for teachers which should be left available for others to use; therefore it was not registrable under s. 12(1)(b) of the Trade-marks Act - The Federal Court dismissed the applicant's appeal - The applicant appealed, submitting, inter alia, that the Registrar ought to have approved the application for publication and let the matter be argued before the Trade-mark Opposition Board - The Federal Court of Appeal disagreed - It was clear from ss. 12(1)(b) and 37(1)(b) of the Act that the Registrar had to refuse an application "if he is satisfied that ... the trade-mark is not registrable" - Thus, if the Registrar was of the view that the trademark at issue was clearly descriptive of the character or quality of the wares or services in association with which it was used or proposed to be used, he had to refuse registration - Section 37 was a complete code for the review of applications for registration - The Registrar had no discretion to advertise a trademark if he was satisfied that it was not registrable - See paragraphs 31 to 35.

Cases Noticed:

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91 (F.C.A.), refd to. [para. 11].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340; 2006 SCC 22, refd to. [para. 11].

Advance Magazine Publishers Inc. v. Wise Gourmet Inc. (2009), 356 F.T.R. 270; 2009 FC 1208, refd to. [para. 11].

Molson Companies Ltd. v. Carling O'Keefe Breweries of Canada Ltd., [1982] 1 F.C. 275 (T.D.), refd to. [para. 17].

ITV Technologies Inc. v. WIC Television Ltd. (2003), 239 F.T.R. 203; 29 C.P.R.(4th) 182; 2003 FC 1056, refd to. [para. 19].

Neptune S.A. v. Canada (Procureur général) (2003), 237 F.T.R. 240; 2003 FCT 715, refd to. [para. 20].

Housen v. Nikolaisen et al., [2002] 2 S.C.R. 235; 286 N.R. 1; 219 Sask.R. 1; 272 W.A.C. 1; 2002 SCC 33, appld. [para. 27].

Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 C.P.R. 29 (Ex. Ct.), refd to. [para. 29].

G.W.G. Ltd. v. Registrar of Trade-marks (1981), 55 C.P.R.(2d) 1, refd to. [para. 29].

Association of Professional Engineers of Ontario v. Registrar of Trade-marks (1959), 31 C.P.R. 79, refd to. [para. 29].

Effigi Inc. v. Canada (Attorney General) (2005), 339 N.R. 109; 2005 FCA 172, refd to. [para. 33].

Eastman Photographic Materials Co. Ltd. v. Comptroller-General of Patents, Designs and Trade-marks, [1898] A.C. 571, refd to. [para. 35].

General Motors Corp. v. Bellows, [1949] S.C.R. 678; 10 C.P.R. 101, refd to. [para. 37].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 12(1)(b), sect. 37(1)(b) [para. 8].

Authors and Works Noticed:

Chromecek, Milan, and McCormack, Stuart C., World Intellectual Property Guidebook Canada (1991), pp. 6-61 to 6-68 [para. 29].

Hughes, Roger T., Ashton, Toni Polson, and Armstrong, Neal, Hughes on Trade Marks (2nd Ed. 2005) (Looseleaf), pp. 629 to 631, para. 30 [para. 29].

Oyen, Gerald O.S., Clearly Descriptive Trade-marks - Drawing the Line in the Wake of the Off! Decision, 65 C.P.R. 193, pp. 217, 243 [para. 37].

Counsel:

Mark L. Robbins, for the appellant;

Jacqueline Dais-Visca and Abigail Brown, for the respondent.

Solicitors of Record:

Bereskin & Parr LLP, Toronto, Ontario, for the appellant;

Myles J. Kirvan, Deputy Attorney General of Canada, Ottawa, Ontario, for the respondent.

This appeal was heard at Toronto, Ontario, on October 24, 2012, by Blais, C.J., Nadon and Dawson, JJ.A., of the Federal Court of Appeal. Nadon, J.A., delivered the following decision for the court on February 21, 2012.