It's officially time for a change to Canada's official marks regime

Official marks are a unique creature of Canadian trademark law and allow certain non-private sector bodies, known as ‘public authorities’, to obtain special protection for marks that they have adopted and used. Protected under Subparagraph 9(1)(n)(iii) of the Canadian Trademarks Act, official marks can comprise common words or phrases such as ‘engineer’, ‘doctor’, ‘postal code’ and ‘Today’s special’. The rights afforded to owners of official marks are broader than those conferred on trademark owners, since the owner of an official mark obtains exclusivity for all goods and services.

For many years, Canadian trademark practitioners and legal scholars have been advocating for reform to the official marks provision.

In June 2014 Bill C-611, An Act to Amend the Trademarks Act (public authority), was introduced. This proposes changes to the official marks regime under the act. The bill was introduced as a private members bill, which is a bill put forward by a member of Parliament who is not a cabinet minister.

Official marks

Canada is the only jurisdiction in the world with a general legislative provision for marks used by public bodies. Other countries have elected to create special statutes on a case-by-case basis for public authorities that require special trademark protection (eg, Olympic bodies).

To seek official mark protection in Canada, an entity must be a Canadian public authority. While ‘public authority’ is not defined in the act, the jurisprudence has developed a two-part test for evaluating public authority status:

• A significant degree of control must be exercised by the appropriate government over the activities of the body.
• The activities of the body must benefit the public.

Entities seeking protection for their mark as an official mark must adduce evidence of public authority status.

Some of the issues with official marks

To understand why there have been calls for reform to the official marks system, one needs to understand how powerful official mark protection is.

Official marks are not subject to the examination by the registrar of trademarks that regular trademark applications undergo. In particular, official marks need not meet the test for registrability under Section 12 of the Trademarks Act. For example, an official mark may be clearly descriptive or deceptively misdescriptive (or even generic), primarily merely a name or even confusingly similar to a trademark that is already on the register.

An application for an official mark need not contain any goods or services. Therefore, the exclusive right to use an official mark is not generally limited to specific goods or services, or even to any specific class of goods.

In reviewing an application for an official mark, the registrar need only be satisfied that the entity seeking the official mark is a Canadian public authority and has itself previously adopted and used the mark in Canada as an official mark.

If it is so satisfied, and unless the mark is obscene or contrary to public order, the registrar will publish notice of the official mark in the Canadian Trademarks Journal, the same publication that contains advertisements of regular trademark applications for opposition purposes.

Once an official mark has been published, the public authority can prevent third parties from adopting, registering or using it (or a mark resembling it) without the consent of the public authority, regardless of the goods or services associated with that other mark.

There are two exceptions to prohibitions created by official marks. First, an unregistered trademark used before publication of an official mark can continue to be used, but the owner of such mark cannot register the mark. Second, where a trademark owner has registered its trademark before publication of the official mark, that owner may continue to use its mark and maintain its rights.

In either case, the owner will be unable to extend use of the mark to other goods or services.

Under the existing system, official marks cannot be opposed when published or expunged for non-use and exist without term.

For this reason, they are often characterised as invulnerable. An official mark remains active and enforceable unless voluntarily withdrawn by the public authority or successfully challenged by a third party via judicial review on the basis that the entity is not a Canadian public authority or did not adopt or use the mark at the date of publication.

Proposed amendments

The proposed changes in Bill C-611 include a definition of ‘public authority’ and a three-month objection/opposition period during which interested parties can challenge an official mark. Bill C-611 also sets a 10-year term limit for official marks, with the option to renew for further 10-year periods, each of which can also be challenged.

The proposed grounds of objection/opposition are as follows:

• The mark has not been adopted or used in Canada by the public authority;
• The body that requested the registrar to give public notice is not a public authority;
• The mark is identical to, or so closely resembles as to be likely to be mistaken for, a registered trademark whose date of registration pre-dates the first granting of public notice in respect of the mark that is the subject of the statement of objection and may significantly undermine the ability of that rights holder to exploit its registered trademark fully, or may result in confusion;
• The mark is a generic term, such that its protection as an official mark may unduly restrict the ability of traders to accurately describe their wares or services; or
• The granting of the official mark does not serve the public interest.

The transitional provisions of Bill C-611 further provide that all existing official marks will be subject to objection/opposition within three months of the bill’s entry into force.

Bill C-611 was introduced by a member of Parliament who represents one of the opposition parties, so it is unlikely to become law. Nonetheless, it serves as a reminder that the official marks regime needs to be reworked.

Recently, there has been a flurry of legislative activity in Canada in the area of trademarks. Apart from Bill C-611, two other pieces of legislation dealing with trademark law have been introduced in the past 18 months. Bill C-56, the Combating Counterfeit Products Act, was introduced in Spring 2013 (and reintroduced in October 2013 as Bill C-8). Bill C-31, the Economic Action Plan Act 2014, No 1, was introduced in March 2014. The latter – which contained significant amendments to the Trademarks Act, including amendments that would implement portions of the Madrid Protocol, Singapore Treaty and Nice Agreement – passed into law in June 2014. Neither Bill C-8 nor Bill C-31 addresses official marks.

Calls for reform

Official marks were originally created to protect authoritative symbols from trade and commercial use. However, this purpose has been obscured by the primary purpose for which these marks are now used: to provide public authorities – many of which are heavily involved in commercial activity – with a quick and inexpensive way to shield their intellectual property while obtaining an advantage over competitors in the commercial marketplace.

In March 2013 the Canadian Parliament’s Standing Committee on Industry, Science and Technology issued its report on the Intellectual Property Regime in Canada. The report included the following recommendation: “to restrict the scope of official marks to important national government symbols and to narrow the definition of public authorities to avoid stifling innovation and distorting markets.”

The genesis for Bill C-611 was that certain provincial bodies regulating professions (eg, massage therapists and traditional Chinese medicine practitioners) were obtaining official mark protection for certain common words and images associated with the profession, and then seeking to prevent other regulatory bodies within the same field, as well as small businesses, from advertising services using these words or images.

Is Bill C-611 a solution?

Bill C-611 is arguably an improvement on the status quo, since it allows interested parties to oppose an official mark at both the application stage and the renewal stage and puts a term limit on official marks (which exists for trademark registrations), such that deadwood official marks can no longer impede the registration of a trademark.

Yet some Canadian trademark practitioners are of the view that the entire official marks regime should be eliminated, save for some clear exceptions, such as the names of government agencies or departments.

While it is unlikely that Bill C-611 will become law, in light of the recommendation contained in the Standing Committee’s March 2013 report, at least some parts of it could end up being incorporated into Canadian trademark law at some point in the future. In any event, there is a consensus among most trademark practitioners in Canada that the official marks regime is in need of significant reform.