A not-for-profit organization may be eligible to protect its mark as an "official mark" in Canada. The process to obtain official mark protection is different than the process to obtain a registered trade-mark. I asked my colleague Brandon Evenson some questions to help organizations better understand the differences between the two forms of protection, and some of the considerations in deciding which form of protection to pursue.
Question: What is an "official mark"?
Brandon: An official mark is a mark that is protected under section 9 of the Trade-marks Act (Canada). Official mark protection is only available to "public authorities". For an organization to be considered a public authority, it must meet a two part test. First, a significant degree of control must be exercised by the appropriate government over the activities of the organization, such as legislation conferring powers on a relevant Minister to review the activities of the organization. Second, the activities must benefit the public, such as regulating the practice of a profession.
Question: How does one obtain an official mark?
Brandon: The process to protect an official mark is relatively simple, quick, and inexpensive. An organization simply needs to advertise or publicly display the mark (e.g. on its website, etc.), and then ask the Canadian Trade-marks Office to publish notice of its adoption and use of the mark as an official mark. Proof of use of the mark must accompany the request, along with written submissions establishing that the organization qualifies as a public authority. The mark is protected as an official mark once the Office gives public notice in its Trade-marks Journal of the organization's adoption and use.
Question: How does obtaining an official mark differ from applying to register a trade-mark in Canada?
Brandon: There are a number of differences. If an organization is a public authority, the process to get and maintain an official mark is typically easier, faster, and cheaper (taking into consideration all legal and government fees) than the process to get a trade-mark registration. Unlike a regular trade-mark application, a request for an official mark does not require the requester to list the wares and services with which the mark is used in association. Also, an official mark is not examined for confusing similarity to prior trade-marks, descriptiveness, or other restrictions affecting regular trade-marks, nor is it subject to opposition proceedings by third parties. This means that official mark protection is available for marks that cannot be registered as regular trade-marks. Once protection has been granted, there is no need to renew the official mark, whereas a registered trade-mark must be renewed every 15 years for a fee.
Question: Is there a difference in terms of the type of protection?
Brandon: Official marks are also entitled to a broad scope of protection. No one may register the official mark or any other mark so nearly resembling the official mark as to be likely to be mistaken for it, unless the owner of the official mark consents. Also, no one may adopt or use, in connection with a business, as a trade-mark or otherwise, any mark that so nearly resembles the official mark as to be likely to be mistaken for it, unless the use pre-dates the public notice of the official mark, or the owner of the official mark consents. There is also no obligation to police or enforce official marks, and official marks cannot be attacked on the basis of non-distinctiveness.
Question: Should an organization seek a trade-mark registration or official mark protection?
Brandon: Ideally, if an organization is a public authority and eligible to request an official mark, it should seek both forms of protection. Official mark rights and regular trade-mark rights can co-exist. By strategically utilizing both protection schemes, organizations can obtain immediate and potentially indefinite brand protection, as well as an overlay of rights and multiple legal grounds on which to sue would-be infringers. If an organization were to choose only one form of protection, it should seek an official mark. However, it would be best to discuss that decision with a trade-mark lawyer or registered trade-mark agent.
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