Official Marks in Canada and Beating Official Mark Citations
What Are Official Marks?
Official marks are unique to Canadian trademark law. Subparagraph 9(1)(n)(iii) of the Trademarks Act describes the protection of official marks:
9 (1) No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,
(n) any badge, crest, emblem or mark
(iii) adopted and used by any public authority, in Canada as an official mark for goods or services, in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;
For an entity (applicant) to claim an official mark under subparagraph 9(1)(n)(iii), it will be required to show evidence of its public authority status. Also, the entity must demonstrate the adoption and use of the mark. Examples of public authorities include but are not limited to federal, provincial, and municipal governments, universities, and professional regulatory bodies.
To evaluate if an entity is a public authority, the Registrar of Trademarks ("Registrar") will apply a two-part test ("test"), where "body" refers to the entity. An entity is a public authority if:
- A significant degree of control is exercised by the appropriate government over the activities of the body; and
- The activities of the body benefit the public.
For an entity to satisfy the first part of the test, it needs to be subject to Canadian government control within Canada. In exercising such control, the government, whether directly or indirectly through its nominees, must have a degree of ongoing influence in the entity's governance and decision making. In evaluating government control, the Registrar may consider the following factors: whether the relevant Minister has legislation conferred powers to review the activities of the body; to request the association to undertake activities that, in the Minister's opinion, are necessary and desirable for implementing the intent of the act; and to advise the body on the implementation of statutory schemes.
For an entity to satisfy the second part of the test, its functions must be for the public benefit. The Registrar will consider factors such as the entity's objects, duties, and powers. For example, an entity involved in regulating a profession's practice, setting the standards of professional competence, and ethical conduct of the body's members is considered engaging in activities for public benefit.
In addition to demonstrating its public authority status, an entity must prove it has adopted and used its mark. An official mark is adopted and used if it has been publicly displayed. For example, a mark advertised on a government website with regards to Internet service constituted evidence of its adoption and use. In contrast, a mark used internally within an organization in emails and memorandums was not considered adopted and used.
Once the Registrar is satisfied that an entity is a public authority that has adopted and used its official mark, the Registrar will give public notice of that official mark according to subparagraph 9(1)(n)(iii) of the Trademarks Act, and it will be recorded in the Canadian Trademarks Database.
Official marks are distinct from trademarks in several ways. Official marks are not subject to the same examination process as trademarks – they can be protected even if, for example, they are descriptive or are confusingly similar with registered trademarks. Official marks also do not undergo an opposition period. Further, no goods and/or services need to be identified with respect to their adoption and use, and they do not expire. As noted in Insurance Corp. of British Columbia v Stainton Ventures Ltd, once the Registrar issues public notice regarding the adoption and use of an official mark, that mark is "hardy and virtually unexpungeable".
Current Options to Address an Official Mark Citation
Official marks can prevent the registration of a trademark. Specifically, during the examination of a trademark application, an examiner may object to the registration of the mark on the basis that it is identical to or so nearly resembling as to be likely mistaken for the official mark. The following are some ways to address an official mark citation:
- Arguing insufficient resemblance between the mark and the official mark
One option is to argue that the mark is not likely to be mistaken for the official mark by pointing to the differences between the two. Minor differences between the two may be sufficient to overcome the citation, whereas a nearly identical mark will likely be mistaken for the official mark.
- Obtaining the consent of the owner of the official mark
A second option is to obtain consent from the owner of the official mark to overcome an official mark citation. According to paragraph 9(2)(a) of the Trademarks Act, if the owner of the official gives clear consent, the official mark may be adopted, used, or registered as a trademark.
- Requesting the withdrawal of the citation by showing that the owner of the official mark is no longer a public authority. A third option is for the applicant of the mark to bring evidence demonstrating that the owner of the official mark is no longer a public authority. If there is sufficient evidence for the Registrar to determine that the said public authority no longer exists, then the citation may be withdrawn in accordance with section 37 of the Trademarks Act.
- Challenge the validity of the official mark in Federal Court
A fourth option is to have the official mark declared invalid by applying to the Federal Court for judicial review of the Registrar's decision to grant the official mark. The grounds for invalidation include the owner not being a public authority, and the official mark was not adopted and used at the time the Registrar granted its official mark status.
Currently, judicial review by the Federal court, which can be a lengthy and costly process, is the only way to invalidate official marks. An official mark that has not been invalidated, even where the owner of that mark ceases to be a public authority, can be cited by an examiner to prevent the registration of another trademark.
Amendments to section 9 of the Trademarks Act and Future Options to Address an Official Mark Citation
Under Bill C-86, the Budget Implementation Act, 2018, No. 2., section 9 of the Trademarks Act has been amended to include the following subsections (which are not yet in force as of September 2022):
9(3) For greater certainty, and despite any public notice of adoption and use given by the Registrar under paragraph (1)(n), subparagraph (1)(n)(iii) does not apply with respect to a badge, crest, emblem or mark if the entity that made the request for the public notice is not a public authority or no longer exists.
(4) In the circumstances set out in subsection 9(3), the Registrar may, on his or her own initiative or at the request of a person who pays a prescribed fee, give public notice that subparagraph (1)(n)(iii) does not apply to the badge, crest, emblem or mark.
These provisions, once in place, will provide two new ways to invalidate official marks:
- A party may request the Registrar give public notice that subparagraph 9(1)(n)(iii) no longer applies to the (challenged) official mark if the entity owner is no longer a public authority or ceases to exist; or
- The Registrar, by their own initiative, can give such a public notice
The Trademarks Office has released a draft practice notice regarding subsection 9(4) of the Trademarks Act. Based on the draft, to invalidate an official mark under subsection 9(4), the party making the request must pay the prescribed fee and provide evidence to demonstrate that the entity owner of the official mark is no longer a public authority or no longer exists.
If the Registrar is satisfied, upon initial assessment of the evidence that the entity is no longer a public authority or no longer exists, then a notice will be sent to the holder of the official mark requesting for evidence of their (ongoing) public authority status. The same two-part test as above will be applied to determine if the entity has public authority status.
If the entity owner fails to provide evidence within 3 months and/or the evidence of its public authority status is insufficient, the Registrar will give public notice that subparagraph 9(1)(n)(iii) no longer applies to that particular mark and its official mark status will be "inactivated".