Canada: Official Mark Developments

Last Updated: December 13 2007

Article by Anthony Prenol, © 2007, Blake, Cassels & Graydon LLP

Originally published in Blakes Bulletin on Intellectual Property, December 2007

This past year saw several important developments in the area of official marks. First, the Federal Court of Appeal in Canada Post v. United States Postal Service affirmed a lower court decision that precluded foreign public authorities from enjoying the benefit of Canada’s official mark legislation. Second, a judge of the Federal Court in See You In – Canadian Athletes Fund Corporation v. Canadian Olympic Committee held that a public authority must satisfy the Registrar of Trade-marks that it has indeed adopted and used a mark as an official mark for wares or services in Canada before the Registrar can publish notice of such adoption and use, and the Trade-marks Office subsequently amended its procedures relating to official marks.

Background

Canada has, since the early 1930s, provided special protection to "official marks" used by public authorities, universities and certain armed forces. Paragraph 9(1)(n)(iii) of the Trademarks Act (the Act), which applies to public authorities, provides that "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, any badge, crest, emblem or mark adopted and used by any public authority, in Canada as an official mark for wares or services", in respect of which the Registrar of Trade-marks has, at the request of the public authority given public notice in the Trademarks Journal of the adoption and use of such official mark.

Section 11 of the Act prohibits anyone from using in connection with a business, as a trade-mark or otherwise, any mark that is adopted contrary to section 9. Section 12 also prevents the registration of a mark the adoption of which is prohibited by section 9. Accordingly, official marks can provide rights that, in certain respects, exceed those accorded to registered trademarks. For example, the existence of a section 9 notice for a mark can prevent a third party from registering a similar mark even though the use by the third party of its mark predates the section 9 notice.

The Registrar has, in the past, taken the position that it has no discretion to refuse to give public notice of an official mark on any grounds other than that the requesting party is not a "public authority". For example, the Registrar will not refuse to publish an official mark even though it is identical to a previously registered mark, is non-distinctive or is clearly descriptive of particular wares and/or services. As a result, the Registrar has given public notice of such official marks as CHIROPRACTOR, ENGINEER and MASSAGE THERAPIST.

There are no express provisions in the Act for contesting rights in an official mark, either before or after the Registrar has published a section 9 notice. Given the growing use of official marks and the significant protection given to such marks, it is understandable why so many challenges have been brought in the Federal Court in recent years seeking to set aside section 9 notices and the rights granted by such notices.

Must A Public Authority Be Canadian?

In January 2007, the Federal Court of Appeal affirmed a lower court decision holding that only Canadian public authorities could take advantage of s. 9(1)(n)(iii) (Canada Post v. United States Postal Service). Canada Post had sought judicial review of the Registrar’s decision to publish notice of the adoption and use of thirteen official marks by United States Postal Service (USPS). Among other grounds, Canada Post argued that the words "in Canada" in s. 9(1)(n)(iii) modified "public authority" such that only a "public authority in Canada" could take the benefit of this section. USPS argued that the words "in Canada" modified "adopted and used" such that a public authority, whether it was Canadian or non-Canadian, need only establish that it had adopted and used its mark as an official mark in Canada. USPS further argued that Canada Post’s interpretation was inconsistent with Canada’s obligations of national treatment under both the Paris Convention and TRIPS.

In its decision affirming the lower court’s decision, the Federal Court of Appeal held, in effect, that official marks carry such powerful rights that they should only be granted to entities that are controlled by the Canadian government. The Court of Appeal also held, without giving any reasons, that its interpretation of s. 9(1)(n)(iii) was consistent with Canada’s treaty obligations. The Supreme Court of Canada refused to grant leave to USPS to appeal this decision. As a result, in the absence of legislative reform, only Canadian public authorities will be able to take advantage of official mark protection.

Must A Public Authority Establish Adoption And Use?

For many years, upon receipt of a request to publish a section 9 notice, the Registrar only required the applicant to establish that it qualified as a "public authority" but did not require it to also establish that it had adopted and used its mark in Canada for wares or services.

In a decision issued in April 2007 (See You In – Canadian Athletes Fund Corporation v. Canadian Olympic Committee), however, a judge of the Federal Court cast doubt on this practice. More particularly, Justice Phelan held that it was illogical for the Registrar to require an entity to submit proof that it was a "public authority" but not require it to also submit proof that it met the other statutory criterion, namely that it had adopted and used the mark in question as an official mark for wares or services.

As a result of this decision, the Trade-marks Office issued a practice notice in August 2007 regarding its procedures for handling requests for official mark protection. This practice notice clarified that the Registrar will now require evidence of adoption and use of a mark as an official mark and that the "adoption" and "use" must show an element of public display.

Must The Use Be In Canada?

Although the practice notice does not address the issue of whether the "adoption" and "use" must be in Canada, the logical conclusion of the Canada Post v. United States Postal Service decision is that a "public authority in Canada" need only show that it has "adopted and used" its mark as an official mark somewhere, but not necessarily in Canada.

Is Use By A Licensee Sufficient?

The August 2007 practice notice also contains a curious statement, namely that evidence of adoption and use of an official mark by a licensee will not be considered adoption and use by the public authority. As support for this statement, the practice notice cites the decision of Justice Tremblay-Lamer in Canada Post v. Post Office and the decision of Justice O’Reilly in Canadian Rehabilitation Council for the Disabled v. Rehabilitation Foundation for the Disabled (CRCD). This is difficult to understand for two reasons. First, although Justice Tremblay- Lamer did indeed hold that use by a licensee was not sufficient under s. 9(1)(n)(iii), two other judges of the Federal Court reached the exact opposite decision in cases that they decided. More particularly, in Ontario Association of Architects v. Association of Architectural Technologists of Ontario, Justice McKeown held that the evidence filed by the respondent established that it had adopted and used its official marks itself and through its members as licensees. This fact was sufficient, in McKeown J.’s view, to satisfy subparagraph 9(1)(n)(iii). This finding was not addressed by the Federal Court of Appeal on the appeal of McKeown J.’s decision.

More than one year later, in Magnotta Winery Corporation et al. v. Vintners Quality Alliance, Justice MacKay dismissed Magnotta’s argument that VQA could not rely upon use of its official mark by its licensees. MacKay J. held that "nothing pre- cludes the use of an official mark by a party licensed or otherwise permitted to use it by the public authority whose adoption and use of the mark has been accepted and published by the Registrar, and that authorized use constitutes use by the public authority." MacKay J. did not refer to either the decision in Ontario Association of Architects or the decision in Canada Post on the same point. Therefore, it is difficult to see how the Trade-marks Office could conclude that Tremblay-Lamer J.’s ruling in Canada Post v. Post Office constitutes the definitive view of the Federal Court on whether a public authority can rely upon use by its licensees.

Second, the practice notice’s citation of Justice O’Reilly’s decision in the CRCD case seems ill-founded. In CRCD, the plaintiff argued that its licensee should not be able to rely upon its licensed use of the applicant’s mark as adoption and use of such mark as an official mark by the respondent licensee. Justice O’Reilly reviewed the decisions of Tremblay-Lamer J. and Mackay J. in Canada Post and Magnotta respectively and acknowledged the contradiction between them but also noted that he was not being called upon to decide the same issue. Instead, O’Reilly J. held that it would be unfair for one public authority, having licensed its official mark to a second public authority, to risk limiting the scope of its intellectual property should the second public authority decide to seek its own official mark notice. In such circumstances, O’Reilly J. held, the licensee should not be permitted to rely upon its licensed use as "adoption and use" under s. 9(1)(n)(iii).

In view of the above, the Trade-marks Office’s practice notice on this point mischaracterizes the law. It will, however, take another decision of the Federal Court of Appeal to resolve this issue.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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

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

Events from this Firm
26 Oct 2018, Other, Vancouver, Canada

Cybersecurity, including data privacy and security obligations, has become a critical chapter in every company’s risk management playbook.

30 Oct 2018, Other, Toronto, Canada

Please join us for discussions on recent updates and legal developments in pension and employee benefits as well as employment law issues.

12 Nov 2018, Other, Toronto, Canada

Stories aren’t falsehoods. Stories are the root of all effective human communications: they motivate, animate and clarify. If you aren’t telling stories, you probably aren’t getting your point across.

 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions