Claim Canada: Restrictions on Commercial Use of Canadian Symbols
June 27, 2022
In 1972, a Canadian radio host held a contest, asking listeners to complete the phrase “as Canadian as…”. The idea was to find a Canadian equivalent to the ubiquitous “as American as apple pie”. The winning entry was a decidedly Canadian phrase: “as Canadian as possible under the circumstances”. In many ways, it captures the essence of what Canadians are about. However, it certainly does not lead the list of things people consider “Canadiana”.
One thing that most Canadians agree upon as a symbol of Canada is the flag, and by association the maple leaf. It is therefore not surprising that many companies want to incorporate the flag or the maple leaf in their advertising or packaging. However, companies should be aware of the restrictions on the commercial use of the flag and the maple leaf.
Use of the Canadian Flag
The Canadian flag is a prohibited mark, broadly protected under Section 9 of the Trademarks Act (the “Act”). The Act prohibits any person from adopting, using, or applying to register, as a trademark or otherwise, any mark consisting of the Canadian flag or something that so nearly resembles the Canadian flag as to likely be mistaken for it.
Notwithstanding the prohibition, the Act provides that the Canadian flag may be adopted, used and/or registered with the consent of the Government of Canada. Such consent may be obtained by writing to the Department of Canadian Heritage. Although there are no express guidelines on when consent will be granted, the Department generally considers issues such as whether the use is in good taste, and whether the use will convey any misleading impression of government patronage or association. Furthermore, the flag must be represented accurately and not be modified in its proportions or colours.
Use of the Maple Leaf
There is no prohibition or restriction against use of a maple leaf for commercial purposes. However, there are limits on use of the stylized 11-point maple leaf which is incorporated into the Canadian flag (the “Official Maple Leaf”).
Recently, the Department of Canadian Heritage has updated its guidance on use of the Official Maple Leaf. The guidance suggests that consent is now required for any commercial use of the Official Maple Leaf. However, the updated guidance appears to contradict previous advice from the Department of Canadian Heritage and an existing Order-in- Council.
Like the Canadian flag, the Official Maple Leaf is a prohibited mark pursuant to the Act (see prohibited mark 970441 published pursuant to paragraph 9(1)(i) of the Act). However, on September 2, 1965, the Governor General of Canada issued Order-in-Council P.C. 1965-1623, which provided, pursuant to subsection 9(2) of the Act, a consent to the use by the public of a design or trademark incorporating the Official Maple Leaf.
The consent was granted on the condition that:
- the use of the design or trademark conforms to good taste;
- an applicant for the registration of such design or trademark disclaims, in the application, the right to the exclusive use of the Official Maple Leaf; and
- the owner of such design or trademark will not attempt to prevent anyone else from using the Official Maple Leaf.
Order-in-Council P.C. 1965-1623 has not been revoked or otherwise amended. Accordingly, it appears that the guidance provided by the Department of Canadian Heritage is at odds with the current state of the law. For example, until February 2022, the guidance still referred to the provisions of Order-in-Council P.C. 1965-1623 as operative. Further, the Canadian Intellectual Property Office Trademarks Examination Manual still references Order-in-Council P.C. 1965-1623 in its practice direction regarding trademarks that incorporate or include the Official Maple Leaf.
Official Prohibited Symbols of the Government of Canada
Symbols such as the Coat of Arms of Canada, the CANADA and Flag Design mark, and the Government of Canada Signature are normally reserved for use by the Government of Canada, and their commercial use is prohibited in most instances, except to acknowledge financial support from the Government of Canada.
There are also numerous prohibited word and design marks for which the Government of Canada has sought protection under Section 9 of the Act (for example, the coats of arms of the various branches of the military). Accordingly, due care should be taken in adopting any design or trademark which could suggest a connection to the Government of Canada.
Intersection with False or Misleading Advertising
Users should also consider whether the use of any of these Canadian symbols will create the general impression that the associated goods or services originate in Canada. There are strict compositional rules for making direct or implied "Made in Canada" and "Product of Canada" claims. The Competition Bureau, the government agency regulating advertising, has stated that, depending on the context, pictorial representations (e.g., logos, pictures, or symbols such as the maple leaf) may by themselves be just as forceful as an explicit "Made in Canada" written representation.
Use of Canadian Symbols within a Foreign Trademark
Irrespective of the applicability of Order-in-Council P.C. 1965-1623, there are still limits related to the use of the Canadian flag or the Official Maple Leaf in trademark applications filed outside of Canada. Specifically, the Government of Canada has designated the Canadian flag, the Official Maple Leaf, and the Coat of Arms of Canada, under Article 6ter of the Paris Convention for the Protection of Industrial Property, which protects armorial bearings, flags and other State emblems.
Although this does not generate a trademark right, or any other type of IP right, over the symbols that are covered by that provision, it does prohibit the registration and use of trademarks which are identical to, or present a certain similarity with, these symbols in other countries which are parties to the Convention.
For example, while a company may be able to secure a trademark registration in Canada for a trademark which incorporates the Official Maple Leaf, a foreign application for the same trademark could be refused as prohibited by the Convention.
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The commercial use of Canadian symbols is restricted by trademark and related law. This article outlines some of the restrictions, including recent guidance from the Canadian government.