Canada’s Official Marks – A Public Nuisance?
October 26, 2020
What, you may ask, do Q, ELECTRONIC MAIL, DNA, MEOW MEOW, ICE FISHING, SUDOKU and VOTE BY MAIL all have in common? The answer is quite simple. They are all official marks of Canadian public authorities and, as such, receive special protection under Canada’s unique trademark system.
Canada’s Trademarks Act, in addition to providing protection for the various categories of trademarks that are recognized around the world (such as word marks, designs, shapes of goods, etc.) also provides protection for the “official marks” of public authorities. As discussed below, official marks can create a number of problems for trademark owners who are looking to protect their marks in Canada. This article provides a summary of the official mark system and discusses some of the options available to a trademark owner who is confronted with an official mark.
Canada introduced protection for official marks with the enactment of the Unfair Competition Act in 1932. Although the legislation governing official marks has been slightly modified over the years, the basic principles remain the same.
Canada’s current trademark legislation, the Trademarks Act (the “Act”), provides in subparagraph 9(1)(n)(iii) as follows:
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 [of Trademarks] has, at the request of … the … public authority…given public notice of its adoption and use.
Procedure for Obtaining Official Mark Protection
As can be seen from the wording of s. 9(1)(n)(iii), the process for obtaining official mark protection begins with a public authority making a request to the Registrar of Trademarks (the “Registrar”) to give public notice of the fact that the public authority has adopted and used a badge, crest, emblem or mark as an official mark for goods or services.
The Registrar will examine such a request only to confirm that:
- the requesting party qualifies as a “public authority” in Canada, and
- it has adopted and used the mark in question as an official mark for goods or services.
Aside from this limited examination, courts have held that the Registrar does not otherwise have any discretion to refuse a request for official mark protection. For example, the Registrar does not have discretion to refuse to publish notice of a public authority’s adoption and use of a mark as an official mark on the basis that:
- the mark is clearly descriptive or deceptively misdescriptive of the character or quality of the requesting party’s goods/services,
- the mark is confusing with a trademark that has been previously registered, applied-for or used in Canada, or
- the mark conflicts with a mark that has previously received official mark protection.
That said, there is case law to the effect that the Registrar can always refuse a request to publish a section 9 notice on a matter of "public order". The court in Mihaljevic v. Her Majesty the Queen in Right of British Columbia (1988), 22 F.T.R. 59, appeal dismissed (1990), 116 N.R. 218 (FCA) cited the following as hypothetical examples of official marks being contrary to public order:
- an official mark of one provincial government falsely suggesting that seafood products originating in such province were processed and packed in another province, and
- an official mark that expressed an obscenity in either of Canada's official languages.
Effects of an Official Mark on Third Parties
Once the Registrar has given the requested notice (referred to in this article as a “section 9 notice”), all third parties are prohibited from adopting, in connection with a business, any mark that consists of or so nearly resembles as to be likely to be mistaken for the official mark.
As such, the publication of a section 9 notice:
- will not prevent a third party from continuing to use its trademark in the same manner as it had used such trademark prior to the official mark notice, but
- will prevent a third party from commencing use of a new trademark, expanding its use of a trademark to additional goods and/or services, or recommencing use of a trademark that it had stopped using prior to publication of the section 9 notice.
Additionally, paragraph 12(1)(e) of the Act prevents the registration of a trademark where the adoption of such mark is prohibited by section 9. As such, even if a third party is seeking to register a trademark that it adopted prior to the publication of a section 9 notice for a particular official mark, s. 12(1)(e) would nevertheless act as a bar to registration of the trademark.
Contrast Between Trademarks and Official Marks
Unlike a trademark registration which must be limited to particular goods and/or services, a section 9 notice need not be so limited. In fact, most section 9 notices do not specify any goods/services in association with which the public authority in question has adopted and used its official mark.
Unlike a trademark application which can be opposed by third parties upon advertisement of the application in the Trademarks Journal, there is no available procedure for third parties to oppose a request for publication of an official mark.
Unlike a trademark registration which must be renewed every 10 years to remain in effect, no action must be taken to maintain an official mark notice in good standing.
Extent of Use of Official Marks
Although official marks have been protected in Canada since 1932, for many years they were used only sparingly and so they did not tend to create many problems for trademark owners. However, in the past few decades public authorities have made increasing use of the official mark system.
So, who are the biggest users of official marks? Here are a few examples.
Canada’s national broadcaster, the Canadian Broadcasting Corporation has 549 official marks, including GEM, RAD, GARY, LOVE ME, THE GOODS, FRESH AIR, Q, HOCKEY NATION, BEAR, USHER, GUESS WHAT? and MUSIC WORKS. The CBC even has an official mark for THE BEACHCOMBERS, a Canadian television show that went off the air 30 years ago and told the story of people who salvage logs off the coast of British Columbia.
Canada Post Corporation is also a prolific user of the system with 359 official marks, including PRIORITY, SMART DATA, VOTE BY MAIL, PERMANENT, PLANET, FETCH, BEAR MAIL (what’s the obsession with bears?), DNA and ELECTRONIC MAIL.
But the award for the biggest users of the official mark system would have to go to the provincial lottery corporations which, collectively, have more than 1,400 official marks, including TRIO, MEOW MEOW, CROSSWORD, TAG (but not YOU’RE IT), RED HOT, ICE FISHING, SUDOKU, DOMINOES, 21, SPLASH, GRAND, THE EDGE, JAGUAR’S, and FULL HOUSE.
No Prohibition Against Descriptive or Confusing Official Marks
As noted above, unlike regular trademark applications that are examined for a variety of absolute and relative grounds, a request that the Registrar give public notice of an official mark cannot be refused on the basis that the mark is descriptive or that it is confusing with a mark that is the subject of a registration, prior application or prior use in Canada.
The Act even permits two or more public authorities to obtain protection for the same official mark. For example, BINGO has been recognized by the Registrar as an official mark of both the Manitoba Lotteries Corporation and the Western Canadian Lottery Corporation. Also, Kelowna General Hospital Foundation, Western Canadian Lottery Corporation and Manitoba Lotteries Corporation have all obtained protection for HEART OF GOLD as an official mark (apparently, Neil Young does not qualify as a public authority).
What is an Official Mark?
The Act does not define what it means to adopt and use a mark as an “official mark”. Also, there is very little discussion in the case law regarding the attributes of an “official mark”.
For example, does the word “official” merely require that the mark and its use have been authorized by the public authority in question. This was essentially the holding of a Federal Court judge in Insurance Corp. of B.C. v. Canada (Registrar of Trade Marks) (1979), 44 C.P.R. (2d) 1 (F.C.T.D.), where the court stated that an official mark was one that was derived from and sanctioned by a public authority.
Alternatively, does the term “official mark” mean that the mark has been used to indicate a particular characteristic of goods or services such as their origin, quality, authenticity, etc.
It is perhaps surprising that this issue has received so little judicial attention over the years. For example, can a single public authority truly have 200 or 300 “official marks” or more? Can a show as bad as The Beachcombers truly be entitled to official mark protection?
Alternatively, was subparagraph 9(1)(n)(iii) meant to provide protection for only a small subset of marks that a public authority might use to designate that goods or services originate with it or to designate some other attribute of the goods/services?
Until a court holds otherwise, the Registrar is applying the ruling in Insurance Corp. to the effect that an official mark is a mark derived from, or having the sanction of, persons in office and adopted and used by a public authority in Canada for goods or services.
Who Can Adopt and Use an Official Mark?
To publish notice of an official mark, the Registrar requires the requesting party to file proof that it meets a two-part test to qualify as a “public authority”, namely to show:
- a significant degree of control by the appropriate government over the activities of the requesting party, and
- that the activities of the requesting party benefit the public.
Courts have held that, in order to satisfy the first criterion in the above test, the requesting party must be subject to governmental control within Canada. In Canada Post Corporation v. United States Postal Service (2005), 47 C.P.R. (4th) 177 (F.C.T.D.) affirmed (2007), 54 C.P.R. (4th) 121 (F.C.A.) the court held that restricting official mark protection to Canadian public authorities did not violate the national treatment requirements imposed by the Paris Convention or TRIPS since “official marks” were not “trademarks”.
The test of governmental control requires that the relevant governmental body be enabled, directly or through its nominees, to exercise a degree of ongoing influence in the public authority’s governance and decision-making.
The second part of the public authority test, namely the requirement that the requesting party’s activities benefit the public, is applied less strictly than the first part of the test. For example, the fact that a self-regulatory professional body sets standards for professional competence and ethical conduct of its members is sufficient to establish public benefit despite the fact that the body may also exist to benefit its members.
What Does it Mean to “Use” an Official Mark?
Although the Act contains detailed definitions of when a trademark is considered to be “used” in association with goods or services, the Act is silent on the question of when an official mark is deemed to have been used.
In the case of official marks, the courts have interpreted “use” to require the following elements:
- the mark must be publicly displayed,
- the mark cannot be used merely as a generic or descriptive expression that is not distinguished from the surrounding text, and
- internal use of a mark in correspondence, emails and memoranda is not considered evidence of adoption and use.
Does Use by a Licensee Qualify?
Unlike the provisions in the Act deeming qualifying use of a trademark by a licensee to be use by the licensor, the Act is silent on the question of whether a public authority can claim official mark protection where only its licensee has used the mark.
In Canada Post v. Post Office (2000), 8 C.P.R. (4th) 289 (F.C.T.D.) at paras. 46-62, a Federal Court judge held that a public authority could not rely upon use of a mark by its licensees as constituting use of the mark as an official mark.
However, in two other cases, judges of the Federal Court have held that use of an official mark by a licensee does qualify. See in this regard Magnotta v. Vintners Quality Alliance (2001), 17 C.P.R. (4th) 45 (F.C.T.D.) at para. 67 and Association of Architects (Ontario) v. Association of Architectural Technologists (Ontario) (2000), 9 C.P.R. (4th) 496 (F.C.T.D.) at p. 504 (reversed on appeal but without comment on this finding).
In Canadian Rehabilitation Council for the Disabled v. Rehabilitation Foundation for the Disabled 2004 FC 1357 at paras. 31-32, the Federal Court held that a licensee could not rely upon its use of another person’s trademark for the purpose of seeking official mark protection under s. 9(1)(n)(iii).
How do Official Marks Affect Third Parties?
In the vast majority of cases, the first time that a trademark owner will encounter a particular official mark is during either:
- attempts to clear a particular trademark, or
- prosecution of an application to register its trademark when the Registrar cites an official mark against the application.
Since official marks are not limited to particular goods or services, they can be cited against many different trade marks that are not used, or intended to be used, in association with similar goods and/or services as the official mark.
It is important to note that there is a difference between the test for confusion between two trademarks (which takes into account a number of factors such as the parties’ goods/services and channels of trade) and the test for resemblance between a trademark and an official mark under s. 9(1)(n)(iii).
Courts have held that in applying the test for resemblance, the Registrar or court:
- must consider the question in the context of whether a person, who on a first impression, knowing of one mark only and having an imperfect recollection of it, would likely be deceived or confused,
- may consider the degree of resemblance between the trademark and official mark in appearance, sound or ideas suggested by them, and
- must consider only the resemblance between the trademark and official mark and not the nature of the parties’ goods/services nor their channels of trade.
Addressing the Citation of an Official Mark
For a trademark owner who encounters a citation of an official mark during prosecution of its application, it has several options for addressing the citation.
If the trademark owner is satisfied that its trademark can co-exist with the cited official mark, it will typically consider the following two options:
- argue against the citation on the basis that its trademark does not so closely resemble the cited official mark as to be mistaken for it, or
- if the trademark is identical to or closely resembles the cited official mark, seek the consent of the owner of the official mark to the applicant’s use and registration of its trademark.
The test for resemblance asks whether consumers are likely to be mistaken as between the marks themselves, not whether they are likely to infer a connection as to the sources of the associated goods and services. Accordingly, in many cases it is possible to convince the Registrar that the official mark is sufficiently different in appearance from the applied-for trademark that there will be no such mistake. For example, in CBC v. Big Mountain Coffee House & Roasters Ltd. 2014 TMOB 240, the Opposition Board held that COFFEE NIGHT IN CANADA did not so closely resemble the official mark HOCKEY NIGHT IN CANADA as to be mistaken for it.
Paragraph 9(2)(a) of the Act provides in part that nothing in subsection 9(1) prevents the adoption, use or registration of a trademark that conflicts with an official mark if the public authority that owns the official mark consents. In many cases, a public authority that owns an official mark is open to providing its consent to the registration of a trademark by a third party who is not a competitor to the public authority.
When filing a consent from a public authority with the Registrar, it is important to comply with the following requirements:
- the consent must clearly state that it is consent to the use and registration of the trademark,
- the consent must include either the application number of the pending trademark application or the trademark and the goods/services listed in the application, and
- the consent must not be limited to a period of time.
Proving that the Public Authority no Longer Exists
If it appears that the public authority owner of the cited official mark is no longer in existence, the trademark owner may wish to consider assembling and filing evidence sufficient for the Registrar to conclude that the public authority no longer exists. If the Registrar is so satisfied, it can withdraw its citation of the official mark.
Procedure for Challenging an Official Mark in Court
If a trademark owner concludes that its trademark cannot co-exist with an official mark and/or if the above steps fail or are not available, it may wish to consider commencing a court proceeding to challenge the official mark.
In most cases, a trademark owner will challenge an official mark by commencing a judicial review application in the Federal Court, seeking an order setting aside the notice that the Registrar published of the public authority’s adoption and use of its mark as an official mark.
Judicial review applications have the advantage of being quicker and less expensive that an action. It is important to note that s. 18.1 of the Federal Courts Act requires that an application for judicial review is to be commenced by a party within 30 days after the decision being attacked was first communicated to the party or within such further time as the court may allow. In the case of an official mark, the Registrar’s publication of a section 9 notice in the Trademarks Journal is considered to be communication to the public of the public authority’s adoption and use of its official mark.
In many cases, a trademark owner can legitimately argue that it was not aware of a particular official mark and associated section 9 notice and/or had no reason to challenge the mark and notice until the mark was asserted against it (for example, during prosecution of its trademark application) and so it should be entitled to an extension of the 30-day deadline.
The Federal Court has been quite flexible when it comes to granting extensions of the deadline. For example, in Princess Group Inc. v. Canadian Standards Association 2009 FC 926 at paras. 1, 8, 9, 21, the court allowed a party to commence a judicial review application some 27 years after publication of a section 9 notice.
Additionally, although the typical judicial review application is decided based on the record that was before the governmental body that made the decision in question, the Federal Court has allowed parties to file substantial new evidence on judicial review when challenging an official mark notice. For example, the courts have allowed parties to a judicial review application to file evidence on issues such as whether a public authority had used a mark as an official mark and whether the official mark holder qualifies as a “public authority”.
Parties seeking to attack official marks under judicial review must prove they are "directly affected" by the matter in respect of which relief is sought. In cases to date, the Federal Court has shown a reluctance to deny standing to a party seeking judicial review on the basis that the party is not "directly affected" by the section 9 notice in question.
Given the Act's prohibitions regarding the adoption, use and registration of marks that, broadly speaking, conflict with official marks, the court will likely grant standing to any party that can demonstrate that it is currently using, or intends to use, a mark that is similar to an official mark. The court will likely also grant standing to a party that can demonstrate that it represents the interests of a section of the public in ensuring that a particular person does not wrongfully appropriate to itself an official mark.
It is also possible to challenge an official mark by way of action. For example, a trademark owner can commence an action against the holder of an official mark, seeking a declaration that the official mark is of no force and effect. An action might be the best course of action where the trademark owner is concerned about its ability to obtain an extension of the 30-day limit for judicial review or if it wishes to obtain discovery from the public authority on one or more issues.
Grounds for Challenging an Official Mark in Court
To date, the main grounds upon which a trademark owner has challenged an official mark in court include the following:
- the respondent does not qualify as a “public authority” in Canada,
- the public authority did not “use” its mark as an official mark prior to publication of the section 9 notice (for example, because its use did not occur until after the section 9 notice, was not a public display or was limited to a descriptive use),
- the public authority only used the official mark through its licensee(s), and
- the public authority abandoned the official mark.
In future years, it is to be expected that trademark owners will bring cases that raise additional grounds of attack such as:
- the public authority’s use of its official mark was contrary to public order such that the section 9 notice should be set aside (for example, because its adoption of its mark was in bad faith given its knowledge of a third party’s prior rights in the mark), and
- the public authority did not use its mark as an “official” mark.
To date, Canadian courts have shown an understanding of the need to place some limits on the incredibly brought rights granted to public authorities under section 9. It remains to be seen whether future cases will further restrict the scope of official mark protection.
In a recent decision arising from an appeal of a decision of the Trademarks Opposition Board, the Federal Court commented on when a retailer can establish use of a trademark on goods when the retailer is not the “source” of the goods. Specifically, if a retailer simply affixes its own trademark to goods manufactured by a third party, does that constitute use of the retailer’s trademark in association with those goods.
Interlocutory injunctions in Canadian trademark cases are rare. The decision at first instance to grant a motion for an interlocutory injunction in a dispute related to the “Bombay Frankie” trademark therefore made headlines, at least in trademark circles, for two reasons. First, the fact that the injunction had been granted was in itself noteworthy. Second, many in the intellectual property bar were of the view that the decision misapplied certain fundamental principles of trademark law and therefore introduced uncertainty into the law.
Canada continues to make news (the wrong kind) when it comes to the slow pace of its examination of trademark applications. Despite repeated promises by the Canadian Intellectual Property Office (“CIPO”) to speed things up, the problem is only getting worse. However, there are some promising signs.