Canada’s Forever Register: Newfoundland Trademark Registrations
November 04, 2020
Canadians are at least passingly familiar with the fact that Newfoundland and Labrador has its own time zone – you can almost hear the commercials advising that the hockey game will start at 8:00 p.m. Eastern, 8:30 p.m. in Newfoundland. What is less commonly known is that Newfoundland and Labrador (“Newfoundland”) also has its own register of trademarks – the only province to do so. But, if you want to register a trademark in Newfoundland, you are about 70 years too late. The reasons for that, and the continued existence of Newfoundland trademark registrations, are historical and date back to Newfoundland’s entry into Canadian Confederation.
A Little Newfoundland History
Newfoundland rejected confederation with Canada at the time of its founding in 1867. Newfoundland remained a British colony until 1907, when it acquired Dominion status, making it a self-governing state of the British Empire, separate from Canada. By the 1920s and the 1930s, Newfoundland was severely in debt, and on the verge of economic collapse. In 1933, the Government of Newfoundland made a formal request to the United Kingdom that it legally suspend Newfoundland’s constitution in favour of having its affairs managed by a Commission of Government, members of which would be appointed by the Government of the United Kingdom.
By the end of World War II, some prosperity had returned to Newfoundland. The British government, keen to cut expenditure after the war, hoped that Newfoundland would decide to join Canadian Confederation and end the rule by commission. Ultimately, Newfoundlanders voted to join Canada.
On December 11, 1948, Canada and Newfoundland entered into a Memorandum of Agreement establishing the terms under which Newfoundland would join Canada as its tenth province. Referred to as the Terms of Union, and enacted as legislation of the British government as British North America Act 1949 (now the Newfoundland Act), the agreement established the conditions under which the new province would operate within the legal and political framework of Confederation. Newfoundland joined Canada on March 31, 1949.
Section 21 of the Newfoundland Act provided that all trademarks registered in Newfoundland would maintain those same rights after its entry into Canadian Confederation. Furthermore, the laws of Newfoundland, as they existed on March 31, 1949, would continue to apply to any existing registrations or pending applications.
Therefore, the owner of a trademark registered in Newfoundland prior to April 1, 1949 continues to enjoy the same rights and privileges which the laws of Newfoundland afforded at the time that Newfoundland became part of Canada. Those protections are codified in Canada’s Trademarks Act at sections 67 and 68.
As a result, there are over 2800 Newfoundland trademarks listed on the Canada’s Trademarks Register which have different rights and requirements than all other trademarks in Canada. These marks are denoted with the prefix NFLD as part of their registration number.
The Newfoundland Trademark Register
Prior to joining Canada, Newfoundland had its own trademark register and legislation, entitled Of Trade Marks and the Registration thereof (the “NFLD TM Act”). As noted above, the provision of the NFLD TM Act continue to apply to Newfoundland trademark registrations.
Specifically, the NFLD TM Act provided that a trademark registration was to endure “without limitation”. There were no provisions in the NFLD TM Act related to renewal requirements so a Newfoundland trademark registration will never expire.
Further, there was no mechanism for summary cancellation of a Newfoundland registration, for example on the basis of non-use. However, a registered owner may request that a Newfoundland registration be voluntarily cancelled. The Canadian Intellectual Property Office (“CIPO”) will accept and process such requests.
The NFLD TM Act contained a provision that the Court may, on the application by any person aggrieved by (i) any entry made in the register without sufficient cause, (ii) any entry wrongly remaining on the register, or (iii) by any error or defect in any entry in the register, make an order expunging or varying such entry. There would appear therefore limited ability to challenge a registration in Court. The reference to Court must be seen a reference to the Newfoundland provincial court, which would be the successor to the court with the relevant jurisdiction prior to April 1, 1949. By contrast, the Federal Court of Canada has jurisdiction to make any such similar order in the case of a Canadian federal trademark registration.
Additionally, since the laws of Newfoundland permitted the ownership of a trademark to be transferred, CIPO will record a transfer of ownership of a Newfoundland trademark upon submission of acceptable documentation which would allow CIPO to record the change in ownership, as well as the fee of $1, which was required under the NFLD TM Act.
How does CIPO deal with Newfoundland trademarks?
CIPO does not consider Newfoundland registrations “registered trademarks” on the Register required to be maintained under the Trademarks Act. As such, trademark examiners will not raise an objection to trademarks considered to be confusing with Newfoundland registrations. Instead, the examiner will draw the applicant's attention to the Newfoundland registration and inform them that the application can proceed upon receipt of confirmation that registration of the trademark will be subject to the provisions of subsection 67(1) of Canada’s Trademarks Act, essentially that any registration to issue from the application will exclude Newfoundland.
The Future of Newfoundland Trademark Registrations?
When the Trademarks Act was amended in 2019, there were calls from some corners to address the status of Newfoundland trademarks. For example, some suggested introducing a requirement that Newfoundland trademark registrations be subject to renewal. However, the answer may not be simple.
The Newfoundland Act gives Parliament the ability to repeal, abolish, or alter any laws of Newfoundland in force as of April 1, 1949 which fall under the powers designated to the Federal government under the Constitution. Trademarks traditionally have fallen under these powers. Accordingly, Canada’s Parliament is empowered to make changes affecting the status of Newfoundland trademark registrations.
However, the Newfoundland Act specifically contemplated the treatment of trademarks. This suggest that trademarks, and the Newfoundland law related thereto, were to be excluded from the general derogation of power. The Newfoundland Act forms part of the Constitution of Canada. Accordingly, it may be that addressing the status of Newfoundland trademark registrations would require following the process of amending Canada’s constitution. That means that Newfoundland trademark registrations are not going anywhere fast.
Objections alleging that a trademark is not inherently distinctive have become one of the most controversial aspects of the changes to Canada’s trademark law. In this article, we review what this objection means and how to consider addressing it.
Canadians are at least passingly familiar with the fact that Newfoundland and Labrador has its own time zone. What is less commonly known is that Newfoundland and Labrador also has its own register of trademarks – the only province to do so. Given historical quirks, those registrations may last forever.
In December 2019, the Supreme Court of Canada released a decision which revised the standard of review for appeals from various administrative boards, including from the Trademarks Opposition Board.