Federal Court Expunges Five Certification Marks Registered by Vocational School

On April 14, 2015, the Federal Court of Canada (Court) issued its decision inCollege of Dieticians of Alberta v Canadian School of Natural Nutrition, 2015 FC 449 allowing the application of the College of Dieticians of Alberta (the College) under subsection 57(1) of the Trade-marks Act (the Act) for an order expunging five certification marks and two commercial marks owned by the Canadian School of Natural Nutrition (CSNN). The CSNN is a private vocational school.

The two commercial marks at issue were expunged on agreement of the parties, leaving the following five certification marks at issue:

• R.H.N. (TMA 791,677)
• R.H.N. Registered Holistic Nutritionist (TMA 791,676)
• R.H.N. Holistic Nutritionist (TMA 802,045)
• R.H.N. Holistic Nutritional Consultant (TMA 791,675)
• R.H.N. Registered Holistic Nutritional Consultant (TMA 791,679)

The College, a professional self-regulatory body overseeing dieticians, argued that the CSNN’s certification mark registrations were invalid on several grounds, including for being deceptively misdescriptive and clearly descriptive.

The Court expunged all of the registrations on the ground that they are deceptively misdescriptive, finding that use of the word “registered” or the letter “R.” representing “registered”, in the healthcare context, implies that the associated services are performed under government approval or authority when they are not.

The Court also found that three of the certification mark registrations that comprised an acronym plus accompanying words (“R.H.N. Registered Holistic Nutritionist”, “R.H.N. Holistic Nutritionist” and “R.H.N. Registered Holistic Nutritional Consultant”) were clearly descriptive. In the Court’s view, the words themselves were descriptive of the services that would be performed by the certified individual. While the acronym would not be descriptive on its own, placing it alongside words with matching first letters would render that acronym’s meaning immediately apparent. Since the words are themselves descriptive and the acronyms clearly denote those words, the marks, when viewed as a whole, were found to be clearly descriptive. This remained the case even for the registration for “R.H.N. Holistic Nutritionist”, where the letter “R.” in the acronym does not correlate with an accompanying word in the mark. The Court reasoned that, because a consumer in the healthcare context would recognize the word associated with the letter “R.” as “registered”, even in the absence of the word, this mark would also be clearly descriptive.