Program Completion Designations Expunged as Trade-marks in Summary Judgment
College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada, 2009 FC 1110 (O’Keefe, J.)

October 29, 2009

Christopher S. Wilson and Ryan Austin for the Plaintiff
Joanne Kuroyama for the Defendant

Plaintiff (“CTCMA”) filed a motion for summary judgment pursuant to Rules 213 and 216 of the Federal Court Rules, seeking an injunction to restrain the Defendant (“CNMCC”) from using or licensing the use of certain words or acronym abbreviations (which appear on their face as professional designations), in association with education services and certification for the practice of traditional Chinese medicine and acupuncture, or the operation of a clinic offering Chinese medicine and acupuncture services.

The Plaintiff used the following titles in the accreditation of Chinese medical practitioners and acupuncturists: 

• Dr. TCM (DOCTOR OF TRADITIONAL CHINESE MEDICINE);
• R. TCM. H. (REGISTERED TCM HERBALIST);
• R. TCM.P. (REGISTERED TCM PRACTITIONER);
• R. AC. (REGISTERED ACUPUNCTURIST);

The Plaintiff sought the expungement of the following marks in use by the Defendant: 

• 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)

(collectively, the “CNMCC Registrations”),

and sought to enjoin the Defendant’s use of the following marks, for which registration applications had been made:   

• REGISTERED D.T.C.M.
• DR.TCM
• D.T.C.M. (DOCTOR OF TRADITIONAL CHINESE MEDICINE)
• REGISTRED D.P.C.M.
• P.D.T.C.M. (POST DIPLOMA OF TRADITIONAL CHINESE MEDICINE)

(collectively, the “Other CNMCC Marks”);

plus twenty-four additional marks which it added at the time of the application for summary judgment, which the Plaintiff believed were confusingly similar to its professional designations, or would mislead the public into believing that the Defendant’s marks represented government approved accreditations.  

The Plaintiff, CTCMA, is a regulatory body created by the B.C. legislature to govern the practice of traditional Chinese medicine.  CTCMA is responsible for granting and controlling use of various titles, including Doctor of Traditional Chinese Medicine (Dr. TCM) and Registered Acupuncturist (R. Ac.).  Its mandate and duties were set out pursuant to the Health Professions Act, R.C.B.C. 1996, c. 183 and the Traditional Chinese Medicine Practitioners and Acupuncturists Regulations, B.C. Reg. 385/2000.  

The Defendant, CNMCC, was incorporated as a non-profit company under Canada Corporations Act in 2002. CNMCC creates educational programs and examinations in the field of traditional Chinese medicine and acupuncture. Each educational program and examination is associated with a certain trade-mark. The CNMCC does not teach the programs it creates. The educational programs are provided to students by private schools.    CNMCC does not claim to confer degrees, but rather to provide students who have completed their educational programs and examinations with a certificate indicating completion.

In a lengthy and detailed decision, the Court reviewed the issues and facts as presented by the parties, and organized the record into six main issues, which it disposed of as follows.  
  
1.  The Defendant argued that the issues in dispute were not legitimate trade-mark issues under the jurisdiction of the Federal Court.  The Court disagreed

2.  The Defendant argued that there was undue delay in launching the action, because the Plaintiff had let pass a deadline for filing a statement of opposition to certain of the Defendant’s applications for trade-mark registration.  The Court disagreed, finding that the 5 months that had elapsed between the deadline for a statement of opposition, and the launching of the action did not constitute undue delay.

3.  The Defendant argued that the circumstances were not appropriate to the granting of summary judgment, pursuant to Rule 216 of the Federal Court Rules.   Supported by a lengthy and instructive analysis of the facts and case law, the court disagreed. 

4.  A dispute arose as to the admissibility of an affidavit by a government employee, as to the regulation of health professionals.  The Plaintiff indicated that it would not need to rely on the affidavit, and the matter was dropped. 

5.  The Defendant complained that the Plaintiff had introduced claims about an additional 24 trade-marks in its motion for summary judgment, which had not been mentioned in its original statement of claim.  The Defendant argued that the Plaintiff should have amended its statement of claim, as the additional trade-marks the Plaintiffs sought to enjoin were “material facts.”   The court agreed, and did not consider the additional 24 trade-marks for purposes of the motion. 

6.  Next in the series of issues, the court considered whether the Defendant’s marks were prohibited, not remittable or invalid pursuant to Sections 12 (1) (b), 9(1)(d), 10 and Section 18(1)(b) or 18(1) of the Trade-marks Act.  Undertaking an analysis of each section and the applicable facts, the court found that:

• the impugned marks were not registrable as of the date of registration, because they were clearly descriptive or misleadingly mis-descriptive;
• the marks were prohibited under Section 10 of the Trade-marks Act; and
• the registration of the marks was invalid under Section 18, because they were not distinctive, and because the Defendant was not the person entitled to secure registration.  In particular, the Court rejected the Defendant’s argument that the abbreviations were sufficiently distinctive, because the descriptive phrases in parentheses dominate each mark as a whole.

However, the marks were not found to violate Section 9(1)(d).

7.  The Defendant was found to have engaged in using its marks in a manner that had misled the public contrary to Section 7(d) of the Trade-marks Act.
 
The Court therefore awarded a permanent injunction restraining the Defendant and licensees from using the CTCMA titles, issued an order expunging the Defendant’s registrations, and granted a reference as to damages or profits.

The case is currently before the Federal Court of Appeal. 

By: Ruth M. Corbin