Canada: Official Marks: Developments Under The Canadian Trade-marks Act

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 years previously.

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 marks.

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 definition.

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 action.

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.

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