Private professional associations using “registered” in titles may wrongly imply public regulation

Private professional associations sometimes provide their members with “titles,” and indeed statutes that provide for non-profit corporations may contemplate occupational titles. [FN1] Such (sometimes national) associations may also register such title as trade-marks or certification marks under the federal Trade-marks Act. But when such titles include the word “registered,” they may run afoul of the reserved titles of statutory regulators. [FN2] The “public” nature of the term “registered” was recently illustrated by the College of Dieticians of Alberta, which successfully applied to a court to expunge five certification marks of the Canadian School of Natural Nutrition, a private school. The five certification marks incorporated the initials “R.H.N.”, which stood for “Registered Holistic Nutritionist” or something similar (the “Marks”) [3-4].

The court agreed with the College the Marks could not be registered because the Trade-marks Act prohibits the registration of marks that are deceptively misdescriptive, and the marks here were likely to lead members of the public to the inaccurate belief that associated services are performed by graduates of the school under governmental approval or authority [41 and 48]. The College provided evidence of public inquiries to the College concerning 47 individuals using the Marks, asking if they were registered with the College.

The court agreed the use of the word “registered” or “R” implied government approval which in this case did not exist [49]. The court accepted that the existence of Alberta’s Health Professions Act, along with the College and similar bodies created under legislation, “contributes to an environment where there are many professional healthcare titles which use ‘registered’ – and ‘R’ meaning ‘registered’ – to exclusively denote governmental regulation….” [49] Accordingly, the court ordered all five Marks expunged as deceptively misdescriptive [106].

While this case addresses the misdescriptive nature of the word “registered” only for the purposes of the Trade-marks Act, the decision rests on the likelihood of the public misunderstanding any “private” title with the word “registered” as implying registration with the government, or a government-sanctioned college.

College of Dieticians of Alberta v. 3393291 Canada Inc. (c.o.b. Canadian School of Natural Nutrition), 2015 FC 449

[FN1] See, for example, Part 10 (“Occupational Titles Protection”) of the Society Act,  R.S.B.C. 1996, ch. 433, to be replaced by ss. 201-208 (“Occupational Title Societies”) of the forthcoming Societies Act, S.B.C. 2015, ch. 18.

[FN2] For example, s.12.1(3) of BC’s Health Professions Act prohibits any person other than a registrant of a college from using any name, title, or description in any manner that expresses or implies that the person is a registrant or associated with a college under the HPA.