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Professional association, Engineers Canada, has lost a legal case seeking to prevent a recruitment firm from using the term “engineering” as part of its trademarked name.
In a rare decision, the Federal Court of Appeal in Canada held that Kelly Engineering Services could trademark its name, despite Engineers Canada's previous attempts to stop the firm on the grounds that the use of the term “engineering” was “deceptively misdescriptive” in nature.
Engineers Canada represents the country's provincial and the territorial engineering bodies that regulate engineering in Canada and license the country's 260,000 professional engineers. Canada is the only country to have statutory regulation to protect against the misuse of the title engineer or the term engineering.
Both Engineers Canada and its twelve provincial member associations actively defend against the misuse of the title “engineer” and the term “engineering”, using legal teams funded by member subscriptions. Engineers Canada deals with cases that involve national trademark and businesses, while the associations deal with misuse on a local and individual level.
Engineers Canada, which recently changed its name from the Canadian Council of Professional Engineers, trademarked the words engineer and engineering and their French language equivalents around 25 years ago so they could more actively prevent the misuse of the terms.
Chief executive of Engineers Canada, Kim Allen, said: "In Canada, the paramount obligation of engineers is to protect the public interest. Using a trade-mark or business name that incorporates the term engineering gives the public the message that the services are offered by licensed engineers. Otherwise, the public is misled as to the qualifications of those offering engineering services.”
The organisation has successfully opposed the registration of around 30 trademarks, although it added that once it opposes a registration it is “pretty rare” for a case to progress to the end. It has also entered into consensual agreements that authorised the use of the word engineer and engineering about 100 times. Other examples where it has failed in its opposition include the trademark “Comsol Engineering Lab” for software and the trademark “Engineering excellence is our heritage”, by automotive firm Continental Teves.
Engineers Canada intends to continue defending the title engineer. “Engineers Canada will continue its work to ensure the term engineering is only used by those who are licensed to provide engineering services,” said Allen. “We have to make sure the public is protected.”
The Engineering Council is the UK's regulatory body for Engineering, but does not actively oppose trademarks or defend against the misuse of the term engineering or title engineer, because there are no statutory regulations in the UK for this. However it does pursue the unauthorised use of the titles EngTech, IEng, CEng and ICTTech, which are protected under a Royal Charter and By-laws and by a European Directive.
According to the Engineering Council: “There is a range of practice across different countries and surveys suggest that the UK approach is in the middle of the spectrum.”