An official mark is an authorized mark used by Royalty, universities, governments, and public authorities in Canada for wares and services. Official marks are not trade-marks, although they are governed by the Trade-marks Act (the "Act"). Protection for official marks is automatic. That is, the Registrar of Trade-marks has no discretion to refuse the request for publication of an official mark 1. The Registrar must only ensure that the proper authority sanctions the mark. Official marks need not meet the requirements for the registerability of a trade-mark under the Act 2. For example, a public authority may adopt a mark which is clearly descriptive. An official mark is not used to distinguish the wares and services of one person from those of another, but to identify those wares and services as meeting the regulations and standards of a public body. Therefore, a public body can adopt and use words or symbols which could not be used as trade-marks by private bodies.
This article will focus on official marks of public authorities.
Official marks of public authorities are protected by section 9(1)(n)(iii) of the Act. The Act does not provide a definition for "public authority", so one must turn to the case law in order to determine its characteristics.
Registrar of Trade-marks v. Canadian Olympic Association ("COA") 3 is the leading case on determining whether a body is a public authority. In COA Urie J. held that in order for a body to be a public authority it must: (a) pursue objects of a public nature; and (b) be subject to a significant degree of government control.
Although previous case law 4 held that a body must also owe a duty to the public in order to be considered a public authority, the Federal Court of Appeal in COA held that the finding of enforceable obligations or duties owed to the public was not determinative of whether an entity is a public authority. Urie J. noted that a dichotomy exists in section 9(1)(n) in that it extends protection both to entities whose obligations are imposed by competent legislation and to those whose obligations are self- assumed. Section 9(1)(n) of the Act allows for a wide degree of variation in the public duty owed. The Court contrasted the strict obligations of the RCMP with the beneficial organizations such as the United Nations, which does not have strict public obligations but rather self-imposed obligations. In view of the different public obligations by different entities included in section 9(1)(n), the Court ruled that a duty owed to the public is not a necessary criterion for making a body a public authority.
Adoption and Use
Before an official mark can be published in the Trade-marks Journal it must be adopted and used by the public authority. Adoption cannot be proven by simple reliance on the date of publication in the Trade-marks Journal. Adoption is defined in section 3 of the Act. However, section 3 does not apply to official marks. Use is defined in section 4 of the Act. While section 4 may be helpful in determining what is use in respect of a trade-mark, it is not applicable to official marks, as public authorities have no need to use an official mark for the purpose of distinguishing its wares and services from those others.
Since sections 3 and 4 of the Act are not applicable to official marks one must turn to dictionary definitions of the terms. The dictionary meaning of "adoption" is "to choose; to take a relationship not previously occupied". "Use" is defined as "employment; to avail oneself of". It is arguable then that a fixed intention by a public authority to choose and employ a mark may constitute adoption and use under section 9 of the Act 5.
Protection of Official Marks
A public authority can prevent a third party from adopting, registering or using the official mark or a mark resembling it without the consent of the public authority regardless of the wares or services associated with that other mark. This absolute prohibition provides the official mark owner with a lower threshold in the test for infringement than that provided to trade-marks owners, as they need not show that there is a likelihood of confusion.
There are limitations to the protection granted to an official mark. Although the Act states that an infringing mark must "closely resemble" the official mark, case law suggests that the mark must be almost identical. Additionally, the prohibition offered by section 9 is prospective in operation and does not carry any retroactive prohibition regarding the normal adoption of trade-marks by commercial traders 6. Therefore, a mark adopted before public notice is given can continue to be used after the publication of the official mark. However, an applicant who has adopted his or her trade-mark prior to the publication notice of an official mark would be precluded from obtaining a registration by the subsequent publication of a section 9 notice. The applicant would be entitled to use his or her trade-mark but not to obtain a registration.
Challenging Official Marks
Official marks are sometimes characterized as invulnerable because there is no process to oppose or expunge the public notification of an official mark. Although proof of public authority is a condition precedent to an official mark being published by the Registrar, the official mark holder is not required to re-evidence its status as a public authority at the request of a subsequent challenger 7.
Section 9 of the Act does not contain any provision for relief nor does it allow for the rescission of the Registrar's decision to give public notice of the adoption and use of an official mark.
An appeal lies to the Federal Court from any decision of the Registrar under section 56 of the Act. However, the party challenging the decision of the Registrar must show standing 8. A third party to a decision of a federal tribunal does not have standing to appeal the decision of the Registrar 9. Under section 56 of the Act, only persons directly affected by the decisions of the Registrar (which often includes the applicant alone) may appeal his or her decisions.
Pursuant to section 57 of the Act the Federal Court has exclusive jurisdiction, on an application of any person interested, to order that any entry in the register be struck out on the ground that at the date of the application the entry, as it appears on the register, does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark. However, one cannot use section 57 to challenge the publication of an official mark as an official mark is not an entry in the trade-marks register. The register contains only listing of trade-marks.
In the recent case of Magnotta et al. v. Vintners Quality Alliance of Canada 10 Reed J. held that the Registrar's decision to give notice of the adoption and use of an official mark may be challenged pursuant to section 18.1 of the Federal Court Act.
There has been much criticism of the generous protection which the Act gives to official marks. There are suggestions that the Act may be amended to reduce some of the protection granted to official marks, to put public authorities, especially non-government bodies, on more equal footing with regular trade-marks owners.
Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.
E-TIPS is a registered trade-mark of Deeth Williams Wall LLP.