Trademark Protection In Canada: Are You Official Or Are You "Famous".

A substantially similar article was originally published in IP & Technology Programme, October 2006.

At first glance, official marks and famous marks appear to have little in common. In spite of a seeming lack of commonality, however, they do share one very important attribute: they both constitute unusual categories of trademarks that can, and have, tripped up trademark owners, applicants and practitioners. We hope that this paper will shed some light on these two types of trademarks and provide some practical advice in their regard.

Official marks are unique to Canada and thus can cause practitioners some headaches in trying to help foreign clients understand why a seemingly innocuous mark that is not necessarily identical, and certainly not used in association with similar wares or services, is preventing them from not only registering a mark, but also using the mark.

The concept of famous marks is one that has not been wholeheartedly embraced by the courts in Canada. The recent Supreme Court of Canada decisions have made that very clear. How do you explain to your client that although its mark might be considered famous in its home country, it is unlikely to enjoy the same privilege here?

This article is a primer in both types of marks. It explains the background, recent decisions and the resultant conundrums facing trademark holders and their counsel today in Canada.

Official Marks

Official marks and trademarks are similar in principle. They are both used to brand an organization and its products and services so that they are recognized by the public. However, official marks make up a special category of mark in the Trade-marks Act1 (the Act) and there are important legal differences between the two. In general, an official mark is easier to obtain, maintain and protect than a trademark. Because the Act contains no provisions for expunging, cancelling or revoking an official mark, it has often been said that such marks are invincible. Therefore, official marks are either loved or loathed depending on the viewer's position. For an organization eligible to obtain an official mark, it is often more advantageous to do so than to register a trademark. On the other hand, an organization either holding or applying for a trademark that is encroached on by an official mark is often frustrated by the limited means available to defend its mark. We discuss here some of the significant legal issues surrounding official marks, beginning with a description of their statutory basis.

What Is an Official Mark?

Official marks are one type of special marks that are prohibited for use as trademarks under section 9 of the Act. Section 9 marks are prohibited either automatically or after public notice of their adoption and use is given by the Registrar of Trade-marks (Registrar). Marks automatically prohibited are listed in section 9(1) and include the marks or emblems of the royal family, the Red Cross, the United Nations and the Royal Canadian Mounted Police. Official marks are among those that are prohibited after public notice is requested by a public authority of their adopted use as set out in section 9(1)(n). Other marks that are prohibited after public notice is given include the arms, crests and flags of Canada, its provinces and municipalities (9(1)(e)), marks of the Canadian Armed Forces, universities (9(1)(n)) and marks of other countries that are members of the Paris Convention and World Trade Organization (9(1)(i.3)).

Section 9(1)(n)(iii) which specifically protects official marks reads as follows:

9. (1) No person shall adopt in connection with a business, as a trade-mark 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 wares or services,

in respect of which the Registrar has, at the request of ... [the] public authority ... given public notice of its adoption and use;

Consequently, before an official mark can attain the elevated status of a prohibited mark, three requirements must be met: (1) public notice must be given of the mark's adoption and use; (2) the mark must have been adopted and used by the party requesting that public notice be given; and (3) the requesting party must be a public authority. Each of these requirements will be discussed in more detail below.

Section 12(1)(e) further prohibits the registration of any mark protected by section 9. And Section 11 prohibits the use of any such mark as a trademark.

Applying for an Official Mark

Providing public notice of an official mark's adoption and use is quite different from the steps involved in registering a trademark. To register a trademark, an applicant must make an application to the Trade-marks Office. That application is examined to determine whether such a mark is already on the register of trademarks, whether the mark is distinctive and whether the mark meets the criteria for registration as set out in section 12, such as whether it would cause confusion with a registered trademark. The requirements for seeking public notice of an official mark, by contrast, are quite different. A public authority bypasses this application process when adopting an official mark. It need not satisfy the ordinary registrability criteria. It need only provide a letter to the Registrar requesting notice of the adoption and use of the mark (along with the prescribed fee). The Registrar has no discretion to refuse the public notice of an official mark.2

No specific form is required to request public notice of an official mark. The public authority simply writes to the Registrar requesting that public notice be given. In so doing, the name of the holder must be set out, as well as a statement that the official mark is in use in Canada. It is not sufficient if the mark is proposed for some future use. Actual evidence of the adoption and use of the mark is not required. Universities are an exception in that they are not required to adopt and use the mark prior to publication.

"Public authority" is not defined in the Act. However, evidence must be provided to show that the requesting party qualifies as a public authority. This can be a fairly substantial task. An example of what constitutes evidence may include the articles of incorporation or the legislative Act creating or organizing the public authority - for example, in the case of a hospital, copies of the legislation that creates the hospital should be attached. Any other evidence of how and to what degree the government exercises control over the public authority should also be attached. This, in turn, could include such information as submissions made to the government for approval to exercise certain duties, copies of government subsidy agreements, or other evidence of the public authority's receipt of government funding.

The letter requesting public notice need not contain a statement of the products and/or services in association with which the mark is being used nor the date of the mark's first use. This is irrelevant, since an official mark can be used in association with any products and services.

These letters requesting public notice are maintained as confidential. In this manner, they are not the same as applications for the registration of trademarks, which can be viewed on a public and searchable index of pending applications. The first knowledge the public has of an official mark is when the public notice is published in the Trade-marks Journal.

Challenging an Official Mark

The trademark owner with a mark similar, or even identical, to a new official mark cannot oppose the new official mark the way it can for another trademark application; nor can it pursue expungement proceedings. None of the traditional remedies available to challenge a trademark are available to those seeking to challenge an official mark. The reason is simply that an official mark is not a mark included on the register of trademarks. This has led trademark owners to challenge official marks by way of judicial review proceedings seeking to reverse the decision of the Registrar to give public notice of the adoption and use of an official mark. The grounds for such a …