Official marks, described by some
as an arcane, unusual, noteworthy or curious feature of Canadian
trademark law, may be up for change.
Official marks, provided for under
Section 9(1)(n)(iii) of the Canadian Trade-marks Act, are
badges, crests, emblems or marks adopted and used by a Canadian
public authority as an official mark for wares or services, and in
respect of which the Registrar of Trade-marks has given public
notice of its adoption and use. Official marks have been subject to
some criticism, as Section 9(1)(n)(ii) does not define who
constitutes a public authority; provide for any examination of
official marks; create any objection or opposition regime; and
provide for any duration (and renewal) for an official mark.
In March 2013, Parliament's
Standing Committee on Industry, Science and Technology issued a
report on the "Intellectual Property Regime in Canada".
The report included a recommendation for change to Canada's
official mark regime:
"The Committee recommends that the Government of Canada
introduce legislation which amends parts of the Trade-marks
Act dealing with official marks 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."
In the Spring of 2013, the Canadian
Government introduced Bill C-56, the Combating Counterfeit
Products Act (reintroduced as Bill C-8 in the Fall of 2013),
and earlier this year, the Government introduced Bill C-31, the
Economic Action Plan 2014 Act, No. 1 (which contained
significant amendments to the Trade-marks Act, including
amendments relating to the Madrid Protocol, Singapore Treaty and
Nice Agreement). Neither Bill contained amendments relating to
On June 9, 2014, a private
member's bill1 was put before Canada's
Parliament, seeking to amend the Trade-marks Act to
address official marks.
The proposed changes in Bill C-611,
An Act to Amend the Trade-marks Act (public authority),
include a definition of who constitutes a public authority, an
objection/opposition procedure to the public notice of official
marks, and the provision for renewals of public notice for official
marks every ten years.
The proposed grounds of
objection/opposition would be:
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
the mark is
identical to, or so nearly resembling as to be likely to be
mistaken for, a registered trademark whose date of registration
predates 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 trademark owner to
fully exploit their registered trademark, or may result in
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.
Of particular note, is that the
Bill's transition provisions include that all existing
official marks would be subject to objection/opposition within
three months of proclamation into force of the Bill, which could
mean that the Canadian Trade-marks Office would see a sharp
increase in opposition proceedings, should this Bill pass.
Private member's bills rarely
pass in Canada, but on occasion, the contents of such bills find
their way into government bills at a later date. Given the
recommendation in the Standing Committee's report, it may be
that at least part of Bill C-611 will find its way into Canadian
trademark law in the future.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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