On July 24, 2025, the Trademarks Opposition Board (TMOB) released its decision in Engineers Canada/Ingénieurs Canada v Signify Holding B.V. (2025 TMOB 152). The Board refused an application to register FLUENCE BIOENGINEERING as a trademark because the word “Bioengineering” was found to be deceptively misdescriptive of the applicant’s goods and services. The case is a good example of how Section 12(1)(b) of the Trademarks Act restricts the use of professional designations and of how important it is to produce evidence on the issue of descriptiveness when it arises in a trademark opposition proceeding.
What Section 12(1)(b) says about misdescriptiveness
Section 12(1)(b) bars the registration of marks that are either clearly descriptive or deceptively misdescriptive of their associated goods or services. As we discussed in a previous blog post, this is not limited to the word elements of a mark; design elements can also be found to be descriptive or misdescriptive.
The assessment of whether a mark is clearly descriptive or deceptively misdescriptive is based on the impression of the average consumer, who is assumed to perceive the mark with common sense. If that consumer would reasonably be deceived into believing the mark describes a quality or characteristic of the goods or services that they do not have, then the mark will be considered to be deceptively misdescriptive and therefore unregistrable.
For example, a trademark for a dairy product that is dominated by the word “Organic” would either be clearly descriptive (if the product is, in fact, organic) or deceptively misdescriptive (if it is not). Adding a distinctive term may not solve the problem if the descriptive or misdescriptive element still dominates the average consumer’s impression.
The purpose of the prohibition with respect to deceptively misdescriptive trademarks is to prevent the public from being misled.
For these reasons, the use of professional designations warrants extra caution. In Canada, terms like “engineer,” “architect,” or “accountant” are regulated. If a company uses these words in association with their services, it is not only misleading but also undermines the regulatory system designed to protect consumers. That concern was at the heart of the FLUENCE BIOENGINEERING opposition.
The TMOB’s decision in FLUENCE BIOENGINEERING
Signify Holding B.V., applied to register FLUENCE BIOENGINEERING for a broad range of technology related goods and services. Engineers Canada opposed the application, arguing that the word “Bioengineering” would lead consumers to believe that licensed engineers were involved the performance of the services or production of the goods. To support this claim, Engineers Canada filed affidavits and statutory references showing that Signify was not licensed in Canada and did not employ licensed engineers.
The TMOB agreed with Engineers Canada. It found that Engineers Canada satisfied its initial evidential burden to put into issue whether consumers encountering the term “Bioengineering” would assume that licensed professionals were involved, particularly given the long-standing association between “engineering” and regulated expertise. Because Signify did not submit any evidence to counter this assumption and to meet its legal onus to establish that the trademark was registrable, the Board found the mark was not registrable and refused registration.
Why the decision matters
The ruling demonstrates how easily a misdescriptive element can render a trademark unregisterable. While “Fluence” on its own was found to have no descriptive meaning, the mark as a whole was nevertheless found to be deceptively misdescriptive because it featured the word “Bioengineering”.
It also highlights the importance of producing evidence in opposition proceedings. Engineers Canada backed its arguments with affidavits and references to regulatory statutes, while Signify left the record unrebutted.
Takeaways for businesses
For businesses choosing new names, this case highlights the importance of being cautious not only when using professional designations, but also when using anything that might be construed as being descriptive or deceptively misdescriptive. Descriptive words in a trademark may help with marketing but will weaken registrability. If those words create an impression that is untrue, they can render a mark deceptively misdescriptive and unregistrable. Professional designations are particularly risky since their use without authorization almost always misleads.
The case also shows that how the result of trade opposition proceedings often depends on which party is better prepared. An opponent who provides a strong evidentiary record has a clear advantage. Conversely, an applicant which fails to support its position with evidence risks losing even when it might have had arguments available. If Signify had provided evidence that the average consumer would not perceive “Bioengineering” to refer to the work of professional engineers, then the TMOB may well have decided differently.
Frequently Asked Questions
What does “deceptively misdescriptive” mean under Canadian trademark law?
Section 12(1)(b) of the Trademarks Act prohibits marks that give consumers a false impression about goods or services. If the average consumer would assume a feature that is not actually present, the mark is considered deceptively misdescriptive and cannot be registered.
Why was the term “Bioengineering” a problem in this case?
The Trademarks Opposition Board agreed with Engineers Canada that “Bioengineering” could lead consumers to believe licensed engineers were involved. Because Signify did not present evidence to the contrary, the mark was found unregistrable.
What role did evidence play in the decision?
Engineers Canada filed affidavits and statutory references to support its argument. Signify, by contrast, offered no evidence to meet its burden of proof, which significantly weakened its case.
Does this mean professional titles can never appear in trademarks?
Not necessarily. But regulated titles like “engineer” carry extra risk. Without strong supporting evidence, their use is likely to be seen as misleading and barred under Section 12(1)(b).
What lessons can businesses take from this ruling?
Two key points stand out: avoid descriptive or professional terms that may be misleading, and if challenged, be ready to provide a strong evidentiary record to support registrability.
