After the hyphen separating "trade" and "mark," the "official mark" arguably represents the most arcane feature of Canadian trademark law. Nevertheless, the official mark is formidable. Subparagraph 9(1)(n)(iii) of the Canadian Trademarks Act (the "Act") provides that 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, any badge, crest, emblem or mark adopted and used by any public authority in Canada as an official mark for wares or services, in respect of which the Registrar has given public notice of its adoption and use. While continued use of a pre-existing trademark is exempt, official marks can seriously curtail the ability of a trademark owner to expand its use of a trademark, or register a trademark based on previous common law usage that has not yet been applied for.
Some may find the privilege conferred by subparagraph 9(1)(n)(iii) heavy handed, yet important advantages obviously exist for entities that are able to register a mark as an official mark. First, the entity must merely request that public notice be given of its use and adoption of the mark. Once published in the Canadian Trademarks Journal, official marks become prohibited marks under section 9 of the Act and cannot be adopted by others in connection with a business, as trademarks or otherwise. Second, the official mark need not be distinctive of the entity as a source of wares or services; it may be completely generic or be virtually identical to a previously registered trademark. Third, official marks are not restricted to specific wares or services, and there is no obligation to include any information about the wares or services in public notices. The caveat, however, is that only a public authority may register an official mark.
Accordingly, three options exist for an applicant when an official mark is cited against its trademark application. The applicant may: (1) obtain the consent of the owner of the official mark; (2) argue that the trademark does not so nearly resemble the official mark as to be mistaken for it; or (3) seek the invalidation of the official mark through an application for judicial review in the Federal Court. With respect to option (2), the applicant may find some solace in that the scope of protection afforded by an official mark is arguably narrower than that afforded by a regular registered trademark in at least one respect. Whereas a regular trademark permits the owner to prevent others from using any trademark that is likely to be confusing therewith, an official mark only provides protection against the use of marks that so nearly resemble the official mark that they are likely to be mistaken for it, and the Courts have interpreted the threshold test fairly narrowly.
With respect to option (3), an official mark may only be invalidated on the basis that the mark had not been adopted and used prior to the public notification, or that the body was not a public authority. "Adopted and used" necessitates an element of public display; internal use by the body does not qualify. While the Registrar has indicated that use of a mark by a licensee will not be considered use by the public authority, this appears to remain an open question of law.
In determining whether an entity qualifies as a public authority, the Registrar, following a two-part test adopted by the Federal Court of Appeal in Ontario Association of Architects v. Association of Architectural Technologists of Ontario, must be satisfied that a significant degree of control is exercised by the appropriate government over the activities of the entity, and that the activities must benefit the public. "A significant degree of control" requires that the government be enabled, directly or through its nominees, to exercise a degree of ongoing influence in the entity's governance and decision-making. Moreover, the government must be a Canadian government. In determining whether the activities of the entity benefit the public, the Registrar will consider the entity's mission, duties and powers, and any requirements to dedicate any profit earned to the public. Nevertheless, that the activities of an entity simultaneously benefit its members is not fatal to a characterization of those activities as benefiting the public.
Until recently, official marks were largely considered to be immune to validity attacks. Pursuant to section 18.1(2) of the Federal Courts Act, a party whose rights are directly affected by the official mark may bring a judicial review application within 30 days of the decision sought to be reviewed. However, an applicant may be completely unaware of an official mark until it is cited against its application (perhaps years after publication). Two Federal Court decisions have now indicated that the 30-day window does not begin from the publication date, but rather from the date that the party's rights become affected. In Princess Group Inc. v. Canadian Standards Association, the Court permitted Princess Group Inc. to file an application for judicial review 27 years after publication of Canadian Standards Association's official mark. In doing so, the Federal Court held that the 30-day window only began at the moment that the Canadian Standards Association served Princess Group Inc. with a Statement of Claim invoking the official mark. Last fall, the Federal Court of Appeal went further in Maple Leaf Foods Inc. v. Consorzio Del Prosciutto Di Parma to indicate that it will always be open to an applicant to challenge the validity of an official mark in an appeal of a refusal of an application pursuant to section 9(n)(iii), regardless of how long the applicant had known of the official mark (Maple Leaf Foods Inc. had abandoned a previous attempt to invalidate the same official mark several years before). Accordingly, a party's right may be directly affected by the official mark once the official mark is cited against a party's trademark application or once the owner of the official mark alleges infringement of the official mark. One strategy for parties interested in expunging official marks may be to simply file a regular trademark application for an identical mark with the goal of subsequently challenging the official mark once it is cited during examination.
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