In June, the Trademarks Opposition Board ruled in favour of Engineers Canada’s opposition to an application that would have seen the term ‘engineering’ used inaccurately. The decision held that the proposed trademark, “Engineering tomorrow. Together”, by ThyssenKrupp AG risked misleading consumers, creating public confusion, and misrepresenting the ENGINEERING mark.
ThyssenKrupp AG, a company based in Germany, sought to register the mark in Canada in respect of a long list of their services, including personnel management consultancy services and financial asset management services.
The Hearing Officer focused on Engineers Canada's assertion that the mark would be deceptively misdescriptive because ThyssenKrupp AG is not licensed to practice engineering in Canada nor are any Canadian engineering professionals involved in the provision of the services. This would mislead consumers.
Further, many services fall within categories which can involve engineers and engineering. In fact, for many of the services listed in the application (e.g. “building construction”, “providing computer training”, “architecture; town planning; structural engineering; mining engineering”), the connection to engineering is either express or readily apparent. For other services, there was sufficient evidence to at least meet the initial evidential burden of showing that the applicant’s services are ones that a consumer may expect to involve engineers or engineering.
The Hearing Officer also determined that the word “engineering” so dominates the mark as a whole that it renders it deceptively misdescriptive. “Engineering” is the first word of the mark and focal point of the mark and without it the remainder of the mark would make little sense.
The decision is an important win in Engineers Canada’s ongoing work to preserve and protect the engineering brand in Canada and to avoid circumstances where the public may be misled by third parties inappropriately using these trademarked terms.
On behalf of the provincial engineering regulators, Engineers Canada holds and administers a portfolio of more than 40 intellectual properties that include official marks, registered trademarks, and registered certification marks. To ensure these trademarks are adequately used and protected, Engineers Canada monitors trademark applications and investigates companies and individuals for legitimacy of the work they do and who they employ.
Engineering is a trusted profession and one that the public relies on for their safety. The oversight of the engineering brand and official marks by Engineers Canada helps to avoid circumstances where the public may be misled by third parties. This case is an example of Engineers Canada exerting ownership of these marks to maintain the trust and integrity of the public in the engineering profession.
Learn more about how Engineers Canada protects the engineering brand:
