In College of Traditional Chinese Medical Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada (2009 FC 1110), the Federal Court (“FC”) granted the College of Traditional Chinese Medical Practitioners and Acupuncturists of British Columbia’s (“Chinese Traditional College”) motion for summary judgment. Registered and application marks of the Council of Natural Medicine College of Canada (“Natural Medicine College”) were expunged for being descriptive under section 12(1)(b) of the Trade-Marks Act (the “Act“), not distinctive under section 18(b), and invalid for registration and in fine under section 18(1). A permanent injunction was issued against Natural Medicine College on two grounds: its marks had previously been commercially usaged under section 10 and mislead the public under section 7(d) of the Act.

Chinese Traditional College governed the practice of traditional Chinese medicine and acupuncture in British Columbia. Since 2000, Chinese Traditional College was responsible for granting and controlling use of titles “Dr.TCM (Doctor of Traditional Chinese Medicine)”, “R.TCM.H. (Registered TCM Herbalist)”, “R.TCM.P. (Registered TCM Practitioner)”, and “R.AC. (Registered Acupuncturist)”. Chinese Traditional College registered members to the college when educational programs were completed and granted accreditation to practice Chinese Medicine. Respondant Natural Medicine College offered educational programs in Chinese Medicine since 2002. Graduates of these programs earned a certificate including a designation corresponding to one of its trademarks but not entitlement to practice Chinese Medicine. Chinese Traditional College moved for summary judgment to expunge Natural Medicine College’s registered trade-marks D.T.C.M. (Doctor of Traditional Chinese Medicine), D.P.C.M. (Doctorate in Philosophy in Chinese Medicine), D.P.C.M. (Doctorate of Philosophy in Chinese Medicine), D.P.O.M. (Doctorate of Philosophy in Oriental Medicine), D.P.O.M. (Doctorate of Philosophy in Oriental Medicine), R.AC. (Registered Acupuncturists), Natural Medicine College’s pending trademark applications, Registered D.T.C.M., DR.TCM, D.T.C.M. (Doctor of Traditional Chinese Medicine), Registered D.P.C.M., P.D.T.C.M. (Post Diploma of Traditional Chinese Medicine) and for injunction against Natural Medicine College.

On the issue of jurisdiction, the FC held that the action was properly before the Court under section 20 of Federal Courts Act, concluding the Chinese Traditional College was not circumventing provincial legislation regulating the health profession through a Federal action.

The FC found it appropriate to dispose of the case through summary judgment under Rule 216 of the Federal Courts Rules. The FC reviewed extensive jurisprudence on the evidential burden under Rule 216 and when a court should refrain from summary judgment. While evidence before the FC was partly contradictory–regarding the role and activities of the Natural Medicine College–it was determined it to be immaterial to refute summary judgment. Moreover, the FC held the evidence presented was the best possible evidence available and did not come only interested parties of both parties.

With respect to the issue of descriptiveness, the FC noted the issue was to be determined from the point of view of an everyday user of the wares or services. Evidence such as yellow pages advertisements commencing in 1995 showing DR. TCM and D.T.C.M being used interchangeably to refer to a doctor of Chinese medicine persuaded the FC that everyday users of the wares were familiar with those terms. Accordingly, Natural Medicine College’s mark REGISTERED D.P.C.M. was found to be descriptive and similar to D.T.C.M., despite the change of one letter. The term REGISTERED was held as suggesting to the public that a practitioner is registered to practice, making the abbreviation more descriptive.

The FC refused to accept Natural Medicine College’s assertion that the acronyms of the trade-marks made them distinctive. The FC cited Canadian Council of Professional Engineers v. Management Engineers GmbH, [2004] T.M.O.B. No. 119, “the applied for mark must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression.” The FC applied this to all the registered Natural Medicine College’s marks and its applications for “D.T.C.M.(DOCTOR OF TRADITIONAL CHINESE MEDICINE)” and “P.D.T.C.M.(POST DIPLOMA OF TRADITIONAL CHINESE MEDICINE)”. Accordingly, these marks were held as clearly descriptive and not distinguishable of the wares or services of respondant Natural Medicine College. The marks were thereby invalid under section 18(1)(a) of the Act and not distinctive under section 18(1)(b). Additionally, the marks were found invalid under section 18(1) in fine because respondent Natural Medicine College was not entitled to secure registration of 17 residents of British Columbia as licensees to the D.T.C.M. mark.

The FC held that the D.T.C.M. and R.AC. marks had been commercially used based on evidence, such as the yellow pages advertisements, indicating these marks historically described Chinese medicine and acupuncturists. On this basis, Natural Medicine College’s marks D.T.C.M., D.P.C.M., D.T.C.M. (Doctor of Traditional CHINESE MEDICINE), R.Ac. and Dr.TCM were found prohibited as recognized marks by section 10 of the Act.

The FC rejected Chinese Traditional College’s offical marks claim under section 9(1)(d) of the Act, characterizing it as an attempt to prohibit the use of various professional titles simply because these titles are prohibited by provincial statutes regulating professions. This approach was rejected in Canadian Council of Professional Engineers v. Lubrication Engineers, Inc., [1992] 2 F.C. 329 (C.A.). However, in contrast to section 9(1)(d), the FC noted that analysis under section 7(d) of the Act was not limited to the impugned mark but focuses on how the person in question uses the mark. The FC found ample evidence suggesting respondant Natural Medicine College mislead the public to believe its licensees were not trade-mark licenses, but Federal versions of regulation in the field of Chinese medicine. The most compelling evidence was advertisements in Ontario which referred to the Natural Medicine College as a government authority.