September 6, 2010

Protecting reserved titles through the Trade-marks Act

Administrative Law
Professional Regulation

Professional organizations may contravene the Trade-marks Act, R.S.C. 1985, c. T-13 by using a trade-mark suggesting a professional designation the organization has no authority to confer, implying governmental approval of services where no approval has been granted, or is misleading the public as to the character of the trade-marks.

The use of certain trade-marked titles by the Council of Natural Medicine College of Canada were found to contravene the Trade-marks Act by being “clearly descriptive or deceptively misdescriptive” and misleading to the public as it created the perception that members of the Council were members of the College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia.

The Court permanently restrained the Council from using certain of its trade- titles associated with education in, clinical operation of, and practice of traditional Chinese medicine. The Court ordered the Council to deliver or destroy offending material, declared that registrations by the Council under the College’s trade-marks were invalid and expunged, ordered a reference on the Council’s profits or general damages in the alternative, and granted costs of the proceeding.

This case illustrates some ways in which professional regulators can protect reserved acts and titles, which ways will include injunctions and remedies authorized under the regulator’s enabling statute. The Trade-marks Act provides powerful remedies for it violation, most notably, injunctive relief, disgorgement of profits obtained through wrongful conduct, and general damages.

College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine of College of Canada, 2009 FC 1110, October 29, 2009, amended April 8, 2010.