Canada: An IP Slam Dunk: Unique Opportunities For Universities To Protect Their Marks In Canada

Last Updated: March 26 2018
Article by Cynthia Rowden and Meghan Dillon

For college basketball fans, the March Madness® NCAA basketball tournament is a must, and this year’s first-ever victory of a No. 16-seed team over a No. 1-seed team will probably end up being the most talked-about event of the whole tournament, even though the No. 16 team, the UMBC Retrievers, went on to lose their next game. Despite that loss, the team has become a media sensation – and according to news reports, representatives for the University of Maryland, Baltimore County were suddenly scrambling to get trademark applications on file in the United States for UMBC RETRIEVERS, 16 OVER 1 and RETRIEVER NATION. 

University sports licensing is big business – with reports of nearly $5 billion dollars annually spent on US university and college merchandise. At the heart of any licensing program are the team names, including nicknames, logos and mascots, as well as cheers and colour combinations. All of these qualify for trademark protection. In the United States, universities with popular sports teams commonly register dozens of trademarks that support their licensing programs that generate revenue associated with everything from clothing to banking services.

Canada has a unique provision in its Trademarks Act that can be used by degree-granting universities, whether in Canada or abroad, to gain broad and economical protection in lieu of, or in conjunction with, regular trademark registration. Specifically, section 9 of the Trademarks Act creates a special type of trademark right for qualified entities, namely universities, as well as public authorities and the Canadian Forces, that avoids ordinary registration steps, including examination by the Trademarks Office for technical or confusion grounds, opposition and renewal. The relevant provision states:

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

(ii) of any university,

in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;….

These rights are also referenced in the registrability provisions of the Trademarks Act (s. 12(1)(e)), that state that any third-party trademark prohibited by s. 9 – including one that consists of or closely resembles a university mark - is not registrable.

Any university (also interpreted to include a college) may request that the Registrar of Trademarks give public notice, through publication in the Trademarks Journal, of symbols that fit within the broad definition of a “badge, crest, emblem or mark”. The request must be accompanied by a fee, which is currently $500 CA. The Trademarks Office will normally request proof, unless the university is well-known, of its degree-granting authority, and may also require evidence of “adoption and use”. Both “adoption” and “use” are defined terms in the Trademarks Act in relation to ordinary trademarks, and these provisions can be used for guidance in determining what constitutes “adoption” and “use” of section 9 marks.  Use requires sales of goods displaying the trademark in the ordinary course of business, while “adoption” includes “use”, as well as “making known” or filing an application. Section 9(1)(n) does not specifically state that such adoption and use must be in Canada, although jurisprudence dealing with public authorities, who can also use this provision to protect their marks, has required Canadian adoption or use.  Since making a request for publication under s. 9 might not qualify as “filing an application”, to clearly qualify for protection under this section there should be either sales in Canada of university merchandise displaying the marks in question, or sales elsewhere, combined with some advertising that has extended to Canada, making the mark known to some extent in Canada.

Apart from an initial assessment by the Trademarks Office to ensure that the request is made on behalf of a qualified entity, no further examination takes place. The requested mark is not reviewed for confusion, inherent distinctiveness, descriptiveness or other objections commonly encountered by regular applications. In fact, it is not unheard of for identical marks in the name of different entities to be published pursuant to these provisions. In addition, the request for publication does not need to specify any goods or services and, once published in the Trademarks Journal, the Canadian Intellectual Property Office database details of the published mark (“section 9 mark”) lists all 45 classes of goods and services.  Section 9 marks remain in effect permanently unless specifically withdrawn by the owner -- there is no need to renew, the mark cannot be cancelled for non-use, and invalidity or abandonment proceedings do not apply. And most importantly, once published, the mark acts as an absolute bar to registration of the same or very similar mark by any subsequent trademark applicant, regardless of possible differences in goods/services, unless consent is specifically given by the owner of the section 9 mark.

For anyone conducting trademark searching in Canada, the serial numbers for marks protected by s. 9 start with the number 9, and are indexed as “advertised”.  Don’t be fooled – these are not pending applications that have been advertised for opposition – they are marks that have already been accepted for publication and/or published in the Trademarks Journal, and may now be a bar to both use and registration. Also, the impact of s. 9 is immediate – a pending application for a regular trademark that has already been approved may  be refused on the basis of its similarity to a subsequently published s. 9 mark.

Needless to say, publication of marks under this section can have significant financial advantages since, apart from government and legal fees for the publication, once published, no further expenses should be incurred, given that there is no examination, opposition, registration fees, use requirements or renewal.

Should a trademark applicant encounter a section 9 mark as part of clearance activities, or during examination of its application, the options are limited – persuade the Examiner that the mark in the filed application is sufficiently different to preclude the likelihood of it being mistaken for the section 9 mark, or obtain the consent of the owner of the section 9 mark. Perhaps in an effort to temper the very broad rights granted by section 9, the Trademarks Office generally cites section 9 marks  only if the application is for  a mark that is identical, or extremely close, interpreting the words “so nearly resembling as to be likely to be mistaken for” as requiring a high degree of visual similarity. If the marks are identical, the trademark application will be refused unless consent is obtained.  Some holders of section 9 marks, including universities, are willing to provide consent as long as steps are taken to avoid any suggestion of licensing, or overlap in trade channels. Others may require monetary compensation in exchange for consent.

The broad prohibitions established by s. 9 affect use as well as registration, so risk analysis should also consider the impact on use in Canada should an identical or similar section 9 mark be encountered.  Practically, few section 9 mark holders aggressively challenge use, but should they do so, there is necessity to show a likelihood of confusion.  Instead, if the thirdk-party use falls into the category of “consisting or so nearly resembling as to be likely to be mistaken for” the published section 9 mark, it acts as a bar to use.

While there is no mechanism to oppose the publication of a section 9 mark, there have been several challenges to the Registrar’s decision to publish various section 9 marks, and a few have been held unenforceable because the owner did not meet the qualifications for publication, such as use, or proper Canadian status. None of these decisions have, as yet, involved university marks.

Occasionally, the very broad rights granted to holders of such protected marks have led to calls to amend the Trademarks Act, for example, to provide for opposition proceedings, or time-limited rights. While the Canadian Government introduced major amendments to the Trademarks Act in 2014 (now expected to be implemented in early 2019), there were no changes to s. 9.

The popularity of university sports, and the potential for significant revenue-generation from the sale of merchandise to students, alumni and fans, makes it important to take steps to identify university marks and symbols, and protect them from encroachment by entities not associated with, or authorized by, the university. While universities can apply, like any other applicant, for regular trademark protection, the special rights in section 9 offer broad, long-lasting protection at a fraction of the cost of regular trademark protection. Seems like a slam dunk.

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.

Authors
Cynthia Rowden
Meghan Dillon
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
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