Accounting Turf Wars - Trademark Oppositions in Canada

In our recent posts, we reported on the decisions which have now been released for the third and fourth quarters of 2019 by the Trademarks Opposition Board in Canada. A significant proportion of the trademark opposition decisions released in the second half of 2019 related to trademark oppositions filed by and opposed by professional associations of accountants.

The Chartered Professional Accountants of Ontario opposed one trademark application filed by Association of International Certified Professional Accountants, a District of Columbia corporation, four trademark applications filed by the Chartered Institute of Management Accountants, a United Kingdom organization, and eight trademark applications filed by American Institute of Certified Public Accountants, a United States entity. To add some additional flavour, the Certified Management Accountants of Ontario also opposed one of the trademark applications filed by the Chartered Institute of Management Accountants, and Ordre des Comptables Professionels Agrees du Quebec filed oppositions against six of the trademark applications which had been filed by American Institute of Certified Public Accountants.

All told, there was a group of 13 trademark applications against which a total of 20 oppositions were filed. The hearings for all of these trademark oppositions were scheduled by the Board over a period of six days.

Beginning with the oppositions by the Chartered Professional Accountants of Ontario against the applications filed by the American Institute of Certified Public Accountants, all of the grounds of opposition failed with respect to the trademark applications for the trademarks AICPA, AICPA & Design and THIS WAY TO CPA. However, with respect to the other five trademark applications, for the trademarks THE UNIFORM CPA EXAMINATION & Design, UNIFORM CPA EXAMINATION, GLOBAL CPA REPORT & Design, AMERICAN INSTITUTE of CPAs, AMERICAN INSTITUTE OF CERTIFIED PUBLIC ACCOUNTANTS, these oppositions were successful with respect to the ground alleging that the trademark was clearly descriptive or deceptively misdescriptive, pursuant to the provisions of Section 12(1)(b) of the Trademarks Act. Here, the Board held that the acronym CPA stood for “certified public accountant”, and that a Canadian candidate prepared to write the necessary examination would understand this. If on the other hand, the candidate thought that the mark referred to the dictionary definition of “chartered public accountant”, then the mark would be deceptively misdescriptive of the services, and still not registrable.

With respect to the oppositions filed by the Ordre des Comptables Professionels Agrees du Quebec to the AICPA trademark applications for THIS WAY TO CPA, THE UNIFORM CPA EXAMINATION & Design, UNIFORM CPA EXAMINATION, GLOBAL CPA REPORT, AMERICAN INSTITUTE OF CPAs, and AMERICAN INSTITUTE OF CERTIFIED PUBLIC ACCOUNTANTS, since no ground of opposition was asserted with respect to an allegation of descriptiveness, all of these oppositions failed on all of the grounds which were pleaded.

The next group of decisions related to the oppositions filed by the Chartered Professional Accountants of Ontario against the following four trademark applications filed in the name of the Chartered Institute of Management Accountants for the trademarks CIMA, CIMA & Design, CIMA STRATEGIC SCORECARD and THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS. All four of these trademark applications were refused, based on the provisions of Section 30(b) of the Trademarks Act, in that the applicant had asserted an incorrect date of first use.

Turning next to the opposition filed by the Chartered Professional Accountants of Ontario to the application filed by Association of International Certified Professional Accountants for the trademark CHARTERED GLOBAL MANAGEMENT ACCOUNTANT, this application was refused, based on an allegation that the trademark was clearly descriptive contrary to Section 12(1)(b, as well as on a Section 30(e) ground of opposition, based on the fact that as of the filing date of the trademark application, the trademark was in fact an asset of a previously formed joint venture, rather than an asset of the applicant. The application was filed by an existing entity and based on proposed use of the trademark in Canada, but the entity which was the intended owner of the trademark was not yet created at the filing date of the application. Although there was no fraudulent intention, the Board held that the misstatement in the trademark application was sufficient to form the basis for a successful ground of opposition.

The final opposition in this series of oppositions was an opposition by the Certified Management Accountants of Ontario to an application for the trademark THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS, filed by the Chartered Institute of Management Accountants, of the United Kingdom. This application was also refused, based on the provisions of Section 12(1)(b) of the Trademarks Act, namely that the trademark was clearly descriptive of the services.

An overview of these decisions suggests that the Trademark Opposition Board will not shrink from refusing trademark applications of professional associations on the basis that they are considered to be clearly descriptive of these services covered by the applications, even where the acronyms which are the subject of the trademark applications may be acronyms which would not be recognized by the general public.