Canada: Official Marks Can Be Challenged By Judicial Review

Last Updated: August 25 2016
Article by Philip Lapin and Daniel Hnatchuk

"Official marks" are a form of intellectual property protection unique to Canada. Many trademark owners, even in Canada, are unaware of official marks.  Those who are aware, are often unclear about the nature of the rights and the options available for dealing with citations of official marks.

Official marks can be a source of frustration when cited by the Trademarks Office against a trademark application. However, applicants have several options available to them to overcome a citation of an official mark.

Recently, a decision of Canada's Federal Court (Starbucks (HK) Limited and Trinity Television Inc., 2016 FC 790) ("Starbucks") has clarified that, under certain circumstances, an official mark may be invalidated.


Although official marks (which are sometimes referred to as "section 9 marks", because they are protected under section 9 of the Trademarks Act) bear some resemblance to trademarks, they differ in several significant respects. Most notably, an official mark can prevent others from using or registering an identical mark or any other mark that would be "mistaken for" the official mark regardless of the associated goods or services.

The most common type of official marks considered by Canadian jurisprudence are those defined in sub-paragraph 9(1)(n)(iii) of the Trademarks Act, which reads:

9(1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,

(n) any badge, crest, emblem or mark

(iii) adopted and used by any public authority, in Canada as an official mark for goods or services,
in respect of which the Registrar has, at the request of...[the] public authority...given public notice of its adoption and use.

Under this sub-paragraph, only "public authorities" can acquire official marks. Before granting an official mark, the Registrar will apply the following two-part test to determine if an entity qualifies as a public authority: (1) a significant degree of control must be exercised by the appropriate government over the activities of the body; and (2) the activities of the body must benefit the public. The clearest examples of public authorities are Canadian governments themselves, namely the federal government, provincial governments and municipal governments. However, the Trademarks Office has also determined that many non-governmental entities are also public authorities such as many Canadian lottery corporations, a number of Canadian research corporations and many other organizations.

Under current practice, before the Trademarks Office will grant an official mark, the applicant must prove that it is a public authority. Historically, however, the Trademarks Office was often prepared to accept an applicant's mere assertion that it was a public authority. Accordingly, numerous official marks were likely granted to entities that do not satisfy the two-part test.

Fortunately, the Starbucks decision demonstrates that judicial review is a possible avenue for trademark applicants to challenge the validity of certain official marks.

The Starbucks Case

On October 24, 2013, Starbucks filed a Canadian application to register the trademark NOW TV & Design (Application No. 1,649,254). The Trademarks Office objected to the application by citing official mark NOWTV (Serial No. 913,106), owned by Trinity Television Inc. ("Trinity"). At the time when the official mark was granted, Trinity was a Manitoba-based corporation operating as a registered charity, with one of its corporate objectives being to produce and distribute television programs conveying Christian teachings.

In response to the objection by the Trademarks Office, Starbucks brought a proceeding in the Federal Court for judicial review challenging the validity of Trinity's NOWTV official mark.

In the Starbucks decision, the Federal Court considered the following issues:

  1. Whether Starbucks had standing to bring the application for judicial review.
  2. Whether the Registrar's Decision was reasonable.
  3. Whether the Court should exercise its discretion to extend the time for making the application for judicial review beyond the 30 days allowed by subsection 18.1(2) of the Federal Courts Act.

On the issue of "standing", the court agreed with Starbucks that it was "directly affected" and had suffered a direct adverse impact from the existence of the official mark.

On review of the Registrar's decision to grant the official mark, the court relied on an earlier case which held that status as a charity does not, in and of itself, mean that the entity is a "public authority". Therefore, the court agreed with Starbucks that the Registrar's decision was unreasonable.

Finally, on the extension of time issue the court held that an extension of time was warranted despite Starbucks' delay to initiate the judicial review proceeding. This is an interesting result since the formal deadline for initiating judicial review is 30 days from notice of the decision of the Registrar to grant the official mark. The decision to grant the official mark was in 2001, namely 13 years before the judicial review proceeding.

As well, the official mark was cited more than one year before the judicial review proceeding. In any event, the court ruled that the delay in initiating the judicial review proceeding was acceptable for the following reasons:

  1. The Applicant's case on the merits was very strong.
  2. There was no prejudice to Trinity, who elected not to respond to the application for judicial review.
  3. There was a reasonable explanation for the delay. Although the Registrar's decision was made 13 years earlier in 2001, the official mark was only cited in the Examiner's Report on July 18, 2014, and the application for judicial review was commenced on October 5, 2015, within the time period for responding to the Examiner's Report.
  4. The Applicant would be significantly prejudiced if it were barred from the proceedings given the exceptional nature of rights conferred on the holder of an official mark. The court noted that there is essentially no other way to challenge an official mark, and that the entity originally requesting the official mark will normally be the only party to the proceeding before the Registrar.
  5. It would be patently unfair and completely contrary to the interest of justice if an entity that is not a public authority was permitted to enjoy the exceptional rights conferred on the holder of an official mark.

Accordingly, the court invalidated the official mark.

Options available to challenge a citation of an official mark

When assessing an objection or complaint based on an official mark, the first consideration is whether or not the mark in issue would be "mistaken for" the official mark. If so, it may be worth attempting to overcome the objection through argument. If that fails or is unlikely to succeed, other options are available.

As the Starbucks case highlights, while challenging the "public authority status" of an official mark holder will not be appropriate in every case, trademark applicants may wish to consider judicial review as an option where an official mark has been cited and where the owner of the official mark may not qualify as a public authority. Although not discussed in the Starbucks case, there are a number of other options available for overcoming a citation of an official mark.

For example, written consent from the public authority will overcome a citation. Alternatively, judicial review is also available in cases where the public authority did not adopt and use the official mark prior to the mark being advertised in the Canadian Trademarks Journal. As a final example, the Trademarks Office will withdraw a citation of an official mark when provided with evidence that the public authority no longer exists.

Because the law surrounding official marks is unusual to Canada and largely misunderstood even within Canada, it is recommended that any objections or complaints based on official marks be considered by trademark counsel with experience in the area of official marks.

For further information regarding this topic, please contact a member of our firm's Trademarks group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Philip Lapin
Daniel Hnatchuk
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.