Formally known as prohibited marks, official marks are a distinctive feature of Canadian trademark law, providing government entities with an exclusive and powerful tool to protect their marks, symbols and emblems. Private enterprises cannot obtain or use official marks without the consent of their owners.
As the official mark regime is unique to Canada, it is important to examine the mechanisms, rationale and impact of the regime on the Canadian and international business community. For example, are official marks proving to be more of a unique obstacle to brand protection in Canada, rather than a unique benefit to government entities?
This article explores the topic of official marks in Canada, including the benefits and challenges that the regime presents. It also proposes potential reforms to strike a better balance between those benefits and challenges.
What are official marks?
Official marks are a special category of marks reserved for public authorities in Canada. Under paragraph 9(1)(n) of the Canadian Trademarks Act, a public authority can request that the Registrar of Trademarks give public notice of its adoption and use of a mark. Once this notice is published in the Canadian Trademarks Journal, the mark becomes an official mark, and others are prohibited from using it, or any mark that so nearly resembles it as to be mistaken for it, in association with any goods or services. Canadian armed forces, universities (anywhere in the world) and other public authorities may secure official marks. To qualify as a public authority, the appropriate government must exercise a significant degree of control over the activities of the organization and the activities of the organization must benefit the public.
Significant government benefits of official marks
- Broad protection to government: official marks provide extensive protection as they are not limited to specific goods or services. Accordingly, a public authority can prevent others’ use of its official mark across all fields and industries, regardless of its own area of use.
- No distinctiveness requirement and no confusion: unlike regular trademarks, official marks do not need to be distinctive. They can be generic, descriptive or even identical to or confusing with existing trademarks.
- Indefinite duration: unlike regular trademarks, official marks do not require renewal and can remain in force indefinitely, providing everlasting protection.
Flaws in the system
While official marks provide many benefits to their owners, their potential negative impacts on the Canadian and international business community should be examined.
Several potential negative impacts on the business community include:
- Lack of oversight: the process for obtaining an official mark is relatively straightforward, requiring only a request for public notice and evidence of adoption and use of the official mark. The lack of rigorous examination can lead to the registration of marks that may not meet the necessary criteria.
- Potential for abuse: since official marks do not need to be distinctive and can be generic, there is potential for abuse. Public authorities may adopt marks that are generic, descriptive or confusing with existing trademarks, creating difficult brand protection challenges for businesses.
- Indefinite protection: the indefinite duration of official marks can hinder the registration of new trademarks. Unlike regular trademarks that require renewal, official marks can remain on the register indefinitely, preventing registration of subsequent marks long after use of the official mark ceases and/or the government entity dissolves, thus unfairly blocking brand owners that wish to register new marks.
- Limited recourse for businesses: a brand owner facing an issue with an official mark has limited options. It can only seek consent from the university or public authority, as the case may be, argue that its mark does not closely resemble the official mark, or apply to the Federal Court of Canada to invalidate the official mark.
- Overbroad protection and unfair commercial advantage: official marks are not regular trademarks and the court or the Registrar, as the case may be, need not conduct a traditional confusion analysis. Rather, official marks are subject to a narrower, “mistaken for” test that considers only the marks’ resemblance, regardless of the goods, services and channels of trade associated with the marks. This narrower test that does not consider the differences in the nature of the goods, services and channels of trade can create obstacles for private brand owners that wish to register their marks. Furthermore, universities and public authorities often request a donation or administrative fee in exchange for their consent. This arbitrary practice puts a further financial burden on the business community where there is no overlap in goods, services or channels of trade and the registration of the brand owner’s mark will not negatively impact the university’s or public authority’s ability to use its own mark.
Improving the system
Canada is currently considering legislative amendments to introduce a simplified procedure to invalidate and/or remove official marks from the register if their owner is no longer a university, a public authority or otherwise ceases to exist. While these proposed amendments are certainly welcome news to the business community, they do not address many of the potential negative impacts noted above.
The following areas of the official mark regime could also benefit from further reform:
- Enhanced oversight and examination: implementing a more rigorous examination process for official marks could prevent the registration by unqualified entities, or generic marks. A more rigorous examination process could require detailed affidavits or statutory declarations explaining the mark’s relevance to the public authority’s mandate, and showing its adoption and use of the mark.
- Limiting the scope of protection: restricting the scope of official marks to specific goods or services, like regular trademarks, would ensure the proportionality of the protection afforded official marks and prevent the potential for abuse and unnecessary obstacles for brand owners that wish to register their marks.
- Renewal requirements: introducing a renewal process for official marks, like that for regular trademarks, would ensure that only actively used marks remain protected, eliminate the barrier created by official marks that are no longer in use, and prevent indefinite protection.
- Opposition and review mechanisms: establishing a formal opposition process whereby third parties can challenge the recordal of an official mark before it is granted could provide a check against improper recordals. Additionally, creating a streamlined process for judicial review could make it easier to contest existing official marks.
Conclusion
While official marks serve an important role in protecting the marks, symbols and emblems of public authorities, the regime is not without its flaws. The lack of oversight and examination, potential for abuse and broad, indefinite protection create significant challenges for brand owners. Addressing these issues through meaningful legislative reform may help balance the interests of public authorities and private enterprises, ensuring that the protections offered by Canada’s trademark system are more in line with jurisdictions around the world.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.