International Board of Standards and Practices for Certified Financial Planners Inc. v. Canadian Institute of Financial Planning
T-1838-91
Joyal J.
27/4/93
19 pp.
Appeal from decision to expunge appellant's trade mark "CFP" -- College for Financial Planning educational institution offering courses, examinations leading to professional designation for financial service professionals in association with trade mark "CFP" -- Since 1983 College registered owner of "CFP" for "educational services, namely, offering courses in financial planning" based on use in Canada since 1973 and on use and registration in U.S.A. -- Appellant independent non-profit corporation formed in 1985 by College and Institute of Certified Financial Planners to ensure certified financial planners practicing in accordance with recognized standards -- Both College and appellant established in U.S.A. -- Evidence from 1983 to 1987 Canadian residents subscribing to educational services provided by College leading to certification of "CFP", for Certified Financial Planner -- Information provided by College having numerous references to "CFP" as identifying service mark -- Appellant setting examination standards, notifying students of examination results -- College assigning trade mark to appellant in 1987 -- Assignment recorded in Trade marks office -- Six months later appellant served with s. 44 (now s. 45) notice to show continued use in Canada -- Hearing not until 1991 -- In meantime College recorded as registered user in 1989 -- Registrar holding trade mark not used during relevant period -- Observing no evidence service performed in Canada for either of two Canadian candidates completing CFP course in 1987, or that any aspect of "course of study" occurring in Canada -- Appellant alleging not using trade mark in association with educational services as intention always to have these services administered by College -- Intending to appoint College as registered user, but failing to do so through inadvertence -- Assignment first step towards having appellant administer trade mark and control extent of use -- Submitting inadvertent failure to register College as registered user "special circumstance" on which technical non-use should be excused -- Appeal allowed -- Although no case law directly on service marks in relation to educational or academic services, similar issues raised in Saks & Co. v. Canada (Registrar of Trade Marks) (1989), 24 C.P.R. (3d) 49 (F.C.T.D.) wherein found ample evidence to maintain registration regarding provision of retail department store services -- No doubt College, as licensee, used mark in Canada in 1987 -- Debate therefore whether absence of use by registered owner due to special circumstances excusing absence of such use -- Review of cases on application of s. 44 (now s. 45) -- S. 45 summary procedure to eliminate unused trade marks -- Same approach should be taken respecting s. 44(3) -- "Special circumstances that excuse such absence of use" not imposing on registered user burden of establishing such special circumstances as will "justify" such absence of use, but as will "excuse" it -- Use by original owner not dealing at arm's length with appellant not misleading public or attacking integrity of trade mark -- Court should not allow formalities of trade mark law to submerge completely obvious purpose and substance of s. 45 proceeding -- Practical consequences of expungement at this stage -- S. 45 proceedings meant neither to confer rights on any initiator of s. 45 proceedings nor to litigate issue between two protagonists claiming same rights in same property -- Case of original trade mark owner assigning mark to new institution, yet continuing to use it as before without benefit of appointment as registered user -- Failure to so appoint, in light of special circumstances providing kind of excuse contemplated in statute -- Trade-marks Act, R.S.C., 1985, c. T-13, s. 45.