Kelly Properties v Canadian Council of Professional Engineers, 2013 FCA 287 (2010 TMOB 224 aff’d, 2012 FC 1344 rev’d)

Why Is This Case Important?

This case is a leading example of how Canadian trademark law treats marks that include regulated professional terms such as “engineering”. The Federal Court of Appeal, in setting aside the Federal Court’s decision, upheld the Trademarks Opposition Board (TMOB) ruling that the mere presence of the word “engineering” in a trademark does not automatically render it unregistrable, nor does it imply that the applicant must be a licensed engineering firm. Instead, the trademark meaning must be evaluated in the context of the associated services and from the perspective of the average consumer, focusing on the immediate first impression rather than technical dissection. This case limits the ability of professional regulators to broadly control the use of terminology within the trademark system.

Also notable is that the Appellate Court rejected and held the additional subsequently-tendered opinion evidence, which provided guidelines and a statutory interpretation of the legislation governing the practice of engineering, to be irrelevant.

Summary

Kelly Properties LLC applied to register the trademark “KELLY ENGINEERING RESOURCES” for personnel employment services. The Canadian Council of Professional Engineers (CCPE) opposed the application, arguing that the mark was deceptively misdescriptive under section 12(1)(b), generic under section 10, not distinctive under sections 2 and 38(2)(d), and not used in Canada as claimed under section 30(b). CCPE also challenged the application’s eligibility under section 14, which allows registration of foreign marks if they are distinctive and not misleading.  Both parties filed extensive affidavit evidence, including industry practice, regulatory restrictions, advertising records, website history, and expert opinions.

The TMOB rejected all grounds of opposition. It found that the mark was not misleading, had acquired distinctiveness through use and advertising in Canada, and was used in Canada as claimed. CCPE appealed to the Federal Court, submitting new affidavits from professional regulators and technical experts. The Federal Court accepted this evidence, found the mark deceptively misdescriptive, and refused the application. Kelly Properties then appealed to the Federal Court of Appeal.

Court Finding

The Federal Court of Appeal overturned the Federal Court’s decision and reinstated the TMOB’s ruling. It held that the Federal Court erred in accepting new evidence. The Court found that the governing legislation was already in evidence before the TMOB, and that the opinions of witnesses interpreting the scope and effect of legislation, including the professional guidelines which simply represent the engineering Association’s opinion as to the meaning of the Alberta statute, were irrelevant. It concluded that the additional affidavits did not introduce new material facts and therefore the TMOB’s decision should have been reviewed on a reasonableness standard, not correctness.

The appeal was allowed, and the TMOB’s decision reinstated.  The TMOB’s findings that the mark was not deceptively misdescriptive, not generic, distinctive, used in Canada as claimed, and registrable, were thereby upheld. Costs of the appeal were awarded to Kelly Properties.

Key Takeaway

Trademark registrability must be assessed based on consumer perception and legal standards—not professional regulation or speculative harm. Context matters: a trademark containing a regulated professional term is not automatically barred, and the critical question is how the average Canadian consumer perceives the mark in relation to the services offered.  Undefined concerns about regulatory language do not suffice; an opponent must demonstrate actual consumer confusion or statutory non-compliance, which CCPE failed to do. This decision affirms the TMOB’s authority under the Trademarks Act and limits the role of professional associations in opposition proceedings. It also underscores the importance of applying the correct standard of review in trademark appeals.