Changes to Trademark Act will ease disputes on ‘official mark’ status: Smart & Biggar lawyer

So, what do the rather ordinary phrases BINGO, MEOW MEOW and DNA all have in common?

Give up? These are all “official marks,” a uniquely Canadian trademark-related intellectual property law feature. And they can be a great source of frustration for those hoping to register a trademark with the Canadian Trademarks Office and run into a citation.

However, changes are on their way, allowing for several options to overcome any trademark pushback for an official mark.

Recent amendments to the Trademarks Act, yet to be in force, will codify one of the options to overcoming an official mark citation that currently is only a matter of practice. The other change introduces a new mechanism to obtain a remedy that is only available at present through the Federal Court of Canada.

These new provisions will soon be coming into force, likely in 2023. The Canadian Intellectual Property Office published a draft practice notice setting out the administrative process to challenge an official mark, with a comment period that ended in late August.

Jamie-Lynn Kraft at Smart & Biggar says that while official marks are like trademarks, they differ in crucial ways.

“An official mark could be a word, an emblem, or a design that has been adopted by a public authority in Canada, and the trademarks office has given notice of that adoption,” says Kraft. “And protection is granted for these marks, under the Trademarks Act. No one else is allowed to use register or adopt any trademark, or a trademark that would … likely … be mistaken for these official marks.”

Most notably, an official mark could prevent others from using or registering an identical mark or any other mark that would be “mistaken for” the official mark regardless of how different the goods or services are from the official mark holder’s business. “The goods, services and businesses involved are not considered in an assessment of the ‘mistaken for’ test,” Kraft says. “The confusion factor that applies to trademarks doesn’t apply when it comes to official marks.”

Kraft also points out that official mark protection does not expire and is not subject to cancellation for not being used within a designated period. Protection for an official mark may also be granted even if the mark is clearly descriptive, a surname, or a commonplace name.

A blog by Anthony Prenol of Chari Prenol Slaney Turco (CPST) Law notes that Canada introduced protection for official marks with the Unfair Competition Act in 1932. Although the legislation governing official marks has been modified over the years, “the basic principles remain the same.”

“Official marks” are described under paragraph 9(1)(n)(iii) of the Trademarks Act as follows: “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, any badge, crest, emblem or mark adopted and used by any public authority, in Canada as an official mark for goods or services, in respect of which the Registrar has, at the request of . . . [the] public authority . . . given public notice of its adoption and use.”

While the clearest examples of public authorities are Canadian federal, provincial and municipal governments, the trademarks office has also determined many non-governmental entities are also public authorities, Kraft says. These include lottery corporations, Canadian research companies, sporting organizations, dairy associations, and museums.

The problem arises when certain agencies – like provincial lottery corporations, are considered public authorities and are granted official marks. “These lottery corporations, for instance, may have large portfolios of official marks for different games or expressions related to lotteries,” she says. “In these cases, we’re not talking about national defence. It could be something like ‘super cherries’ – I’m making that up – that encompass very ordinary well-used words.”

Although official marks have existed since 1932, Prenol says they were used only sparingly. However, more public authorities have used the official mark system in the past few decades.

Prenol’s blog notes that the Canadian Broadcasting Corporation is among the biggest users of official marks. At the time of his post in October 2020, CBC had 549 official marks, he wrote, “including GEM, RAD, GARY, LOVE ME, THE GOODS, FRESH AIR, Q, HOCKEY NATION, BEAR, USHER, GUESS WHAT? and MUSIC WORKS.” There is even 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.

Another heavy user of official marks, Prenol writes, is Canada Post Corporation, at 359 official marks, including PRIORITY, SMART DATA, VOTE BY MAIL, PERMANENT, PLANET, FETCH, BEAR MAIL, DNA and ELECTRONIC MAIL.

However, Prenol points out that “the award for the biggest users” of the official mark system indeed goes to provincial lottery corporations, which, collectively, have more than 1,400 official marks. These include TRIO, MEOW MEOW, CROSSWORD, TAG, RED HOT, ICE FISHING, SUDOKU, DOMINOES, 21, SPLASH, GRAND, THE EDGE, JAGUAR’S, and FULL HOUSE.

Kraft says there is a two-part test to determine whether an entity qualifies as a public authority. First, the appropriate government must exercise significant control over the organization in question. Second, the activities of the body must benefit the public.

Under the current system, when the trademarks office cites an official mark, the “most straightforward” option to overcome any objection is to obtain the consent of the public authority owner.

Often, these public authorities give consent, especially when the official mark is a common dictionary word and the goods and services listed in the application are unrelated to what the public authority does.

When that consent is impossible to obtain, those facing an official mark objection have two other options.

• The trademarks office will withdraw an objection if an applicant provides evidence sufficient for the registrar to determine that the public authority no longer exists.
• A party can challenge the validity of an official mark by bringing a proceeding to the Federal Court of Canada for judicial review.

 To date, the Federal Court has only considered two grounds of invalidity – that the owner is not a “public authority” in Canada or that the official mark was not “adopted and used” before the trademark’s office granted the official mark status.

Kraft notes that the recent amendments could help applications that have a run-in with official marks. These are:

• An official mark does not apply to a badge, crest, emblem, or mark if the entity that requested the public notice is not a public authority or no longer exists.
• The registrar may, on their initiative or at the request of a person who pays a fee, give public notice that the provisions governing official marks do not apply to the badge, crest, emblem, or mark in question.

When in force, Kraft says these provisions will “hopefully create a simple and efficient mechanism to allow the trademarks office to declare that an official mark is no longer valid or enforceable,” Kraft says. However, such a declaration would only be possible under limited circumstances, such as cases where the owner of the official mark is not a public authority or no longer exists.

There is currently no simple mechanism to have an official mark declared invalid because the owner does not qualify as a “public authority.” The only method available is to apply for a declaration or judicial review with the Federal Court. However, Kraft says once the amendments are in force, it will be possible to invalidate an official mark by filing a request with the trademarks office and paying the fee.

If the trademarks office is satisfied with the evidence provided, it will send a notice to the holder of the official mark requesting evidence of the holder’s “public authority” status. If the notice goes unanswered during the prescribed period, or if the evidence is insufficient to meet the relevant test, then the trademarks office can change the status of the official mark to “inactivated.”