It is now, it would seem, a
violation of Canadian trademark law for businesses to send holiday
cards with the message "Season's Greetings". The
Canadian Trademarks Office today gave notice that
"Season's Greetings" has been adopted and used as an
official mark by the Western Canada Lottery Corporation. This means
that "Season's Greetings" is a prohibited mark in
Canada, and specifically that, according to Section 9 of the
Trade-marks Act, it is prohibited for anyone to
"adopt in connection with a business", whether as a
trademark or not, any mark consisting of or likely to be mistaken
for the phrase "Season's Greetings". In theory, a
business distributing holiday cards with this message could run
afoul of this prohibition.
Concerned businesses may be able to
take comfort in the fact that the phrase "Happy Holidays"
has been protected as an official mark since 2006 and the phrase
"Christmas Wishes" has been so protected since 2011 (both
also on behalf of Western Canada Lottery Corporation), and, to our
knowledge, no one has faced repercussions for using those phrases
in connection with their business. The phrase "Holiday
Wishes" and that blandest of greetings, "Winter
Wishes", are also official marks of the Corporation. In what
might be seen as victory for traditionalists, the phrase
"Merry Christmas" has not (yet) been protected as an
Official marks are an unusual and
arcane feature of Canadian trademark law. Created by Section
9(1)(n)(iii) of the Canadian Trade-marks Act, official
marks are badges, crests, emblems or marks adopted and used by a
Canadian public authority as an official mark for goods or
services, and in respect of which the Registrar of trade-marks has
given public notice of the adoption and use. The Act does not
define who constitutes a "public authority", although
caselaw has held that public authorities must be under a
significant degree of Canadian government control. Neither does the
Act provide for the examination of official marks for either
inherent registrability or confusion with other marks, or create
any objection, opposition or non-use cancellation regimes for
Notably, official mark status can
be granted notwithstanding prior rights on the Register and, in
this case, the official mark "Season's Greetings" was
granted over a prior registration for the identical mark for
chocolate, candy and cookies. While the owner of that registered
mark is not prohibited from continued use of its mark with the
registered goods, it will not in the future be able to obtain a
registration for the same mark for an expanded list of goods
without first obtaining consent from the owner of the official
mark, and its use of the mark with goods other than the registered
goods would, just like holiday cards bearing "Season's
Greetings", violate Section 9 of the Act. The fact that
Western Canada Lottery Corporation uses its Season's Greetings
official mark with "scratch 'n win" (also an official
mark) tickets and that the registered owner's goods are quite
unrelated is not relevant to the legal analysis (although it
hopefully is to the practical risk).
Recently, a number of court
decisions have limited the rights of official mark owners against
others, by finding that the official mark was improperly published
since it had not been first "adopted", or the owner
didn't properly qualify as a public authority. However,
these cases have not resulted in publication of the official mark
being formally "withdrawn". Amending the official
mark provisions are frequently on wish lists of changes to the
Trade-marks Act, but despite a major revision to the Act
in recent government legislation, the provisions of s. 9 relating
to official marks were untouched.
One might be tempted to opine that
official marks, with their labyrinthine rules and considerable
clout, are "A-MAZE-ING", but that, too, is an official
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