The summer of 2014 brought two interesting developments with
respect to Section 9 of the Canadian Trade-marks Act
("Act"). In June, Bill C-611, a Private
Member's bill seeking amendments to Section 9, was introduced
before the Parliament of Canada, while in August the Trial Division
of the Federal Court of Canada quashed an official mark declared 18
Bill C-611 seeks to amend Section 9 to clarify what constitutes a
"public authority", require renewal of the public notice
of official marks after 10 years and allow for objection
proceedings against newly-declared or just-renewed official
Only Canadian public authorities can hold official marks but
"public authority" is not defined in the Act. A
definition has been shaped over time by the Federal Court of
Canada, leading to some uncertainty before the Trade-marks Office
as parties seek status as public authorities under an evolving
Official marks are not currently subject to renewal, nor is there
a means to object to their declaration or continued existence
before the Trade-marks Office. Anyone concerned with the
adoption or existence of an official mark must, therefore, seek
redress before the Federal Court.
By placing a definition of "public authority" into the
statute and allowing for objection proceedings within 3 months
after publication of a Section 9 mark and also within 3 months
after renewal, official marks would still have value. The
proposed changes would, however, allow those objecting to an
official mark to have an option other than resort to court
Requiring renewal of public notice of an official mark could
result in a voluntary culling of official marks no longer of
interest to their holders.
The Bill received first reading on June 9, 2014 and while Private
Member bills rarely become law, we are monitoring the Bill and will
provide updates as they may occur.
Next week I will discuss the Federal Court, Trial Division case of
TCC Holdings Inc. v. Families as Support Teams Society.
The Court quashed an official mark declared under Section 9 of the
Act in 1996. That decision holds lessons for holders of
regular trade-marks and official marks.
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.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).