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
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
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
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
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.
Under the Income Tax Act, the Employment Insurance Act, and the Excise Tax Act, a director of a corporation is jointly and severally liable for a corporation's failure to deduct and remit source deductions or GST.
Under the Income Tax Act, the Employment Insurance Act, the Canada Pension Plan Act and the Excise Tax Act, a director of a corporation is jointly and severally liable for a corporation's failure to deduct and remit source deductions.
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