Jan. 22 – We are pleased to report that Engineers Canada was successful in its opposition of two recent trade-mark applications; RAYBESTOS SAFETY Shield & Design and RAYBESTOS SAFETY Shield and Rectangle Design, filed by Brake Parts Inc. (now BPI Holdings International, Inc.).
The first application dealt with the proposed use of the RAYBESTOS SAFETY Shield & Design mark in Canada, based on use and registration of the mark in the United States in association with land vehicle parts and components. The second application, for the RAYBESTOS SAFETY Shield & Rectangle Design, was for the same goods but was based solely on the mark’s proposed use in Canada. The dominant, central part of both marks, which also appears in the largest font on the marks, is the phrase “Safety First Engineering”. In the RAYBESTOS SAFETY Shield & Rectangle Design mark, the phrase “Raybestos Engineering Puts Safety First” also appears as a dominant part of the mark.
Engineers Canada opposed the applications on the grounds that the marks were clearly descriptive or deceptively misdescriptive of the character or quality of the goods and/or of the persons employed in the production of the goods since neither the company nor its employees are licensed to practice engineering in any Canadian jurisdiction. We also opposed the applications on the basis that the marks were not distinctive of the applicant’s goods; namely, that the goods could not be distinguished from the wares of others, including other engineers licensed to practice engineering in Canada.
By decision released January 22, 2015, the Opposition Board refused both of the applications, finding that the idea of “engineering” so dominated the applied-for marks as to render them unregistrable. The Opposition Board also found that the non-distinctiveness ground was successful.
Thank you to the constituent associations for their help in confirming the registration status of this company and in assisting Engineers Canada with its continued efforts to preserve and protect the Engineering brand.
