A guide to official marks

Robert A. MacDonald: Welcome. My name is Rob MacDonald. And in this presentation, I'd like to introduce you to official marks. You may have already encountered official marks if you have cleared or applied to registered trademarks in Canada. They present unique challenges to brand owners. And the purpose of my presentation is to help you understand what they are and how to deal with them. In particular, I will explain the basic concepts of an official mark how they compare to trademarks, who can own an official mark, and what to do when you are faced with an objection based on an official mark. While official marks can be frustrating to deal with, it is worth noting that the scope of official marks has been gradually narrowed down by the courts over the past two decades. That's a good thing. And there is more good news coming in terms of legislation. So let's jump in. The trademarks Act provides for a broad prohibition with respect to official marks. In Section nine, no person shall adopt in connection with the business as a trademark 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 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. Now, there are several key words and phrases in the definition. And I've highlighted some of them on the screen. And I will discuss them later in the presentation. But just to emphasize the process, a public authority who has adopted and used an official Mark writes to the register of trademarks and asks the public notice given of the adoption and use, and it's that simple. And the key thing to remember is this after public notice is given you cannot thereafter adopt a mark that is the same as or so nearly resembles an official mark as to be likely to be mistaken, therefore, that means you can't use it. And you can't register it. Now, the good news, and there's always good news. Everything is okay. If you have the consent of the owner of the official mark, and most owners are quite cooperative in providing consent. Now, you might ask, is this constitutional? And the answer is yes. The issue of constitutionality was addressed by the federal court several years ago, the court was satisfied that the trademarks Act is an exercise of the federal trade and commerce power under the Constitution, and the provisions relating to official marks are a valid exercise of that power. The court also held that the section was not an unjustifiable restriction of freedom of expression. Under the Charter of Rights and Freedoms. The provisions are reasonably tailored to meet the pressing and substantial objective, there is proportionality between the deleterious effects and the solitary benefits. Therefore, the limitation on freedom of expression is justified. So let's take a moment and contrast official marks with trademarks. And the first thing to note is that official marks are not limited to particular goods or services that prohibit prohibition under Section nine extends to all goods and services and all these classes, regardless of the goods or services actually offered by the public authority. Now, the second thing to note is that while the trademarks office has put in place, a process to ensure that an entity is a public authority, and that the Mark has been adopted and used and we'll come back to those terms in a moment, there is no other examination process. The registrar cannot reject the official mark on the basis that the official mark is descriptive lacks distinctiveness or is confusing with a prior mark. As was noted in 2002, the registrar has virtually no discretion to refuse to give notice of the adoption and use of a mark as an official Mark once the body making the request establishes the statutory statutory criteria have met. I should also note that there's no provision for someone to object to or oppose an official mark before the register of trademarks. So there is simply no discretion to refuse to give notice, once the statutory criteria have been met, with the result that you can go through the listing of more than 20,000 Prohibited marks and see words and phrases that should not have been removed from the field of trade or business. And yet that is exactly what happens. publication removes official marks on the field of trade or business.

Now, there's no retrospective effect. If you're already using a mark and have it registered, you're okay. But public notice of an official Mark prohibit someone from commencing use, or extending a registration of an existing mark in association with new goods and services. And this is an important point. If you have used and registered your mark on clothing by way of example, prior to publication of the official Mark, you're okay. But you cannot later extend your use and registration to other goods for example, soft drinks without consent. There is no provision to expunge an official mark because there's nothing to expunge, the registrar has not registered anything, all he has done is give public notice. And to that extent official marks are perpetual, or as one court said party and virtually an expunged. But keep in mind that the framework doesn't grant rights in official marks. Rather it is a framework to prohibit activity. So let's consider that in more detail. Section nine does not confer upon the public authority, any particular protection against claims for trademark infringement. And that brings me to a key case of the federal court in 2018, involving a company called quality program services. This is a key case on the use of an official mark as a defense to an action for infringement and passing off. And spoiler alert, it didn't work. So QP S owned the registered trademark empowering for use in association with energy awareness, conservation and efficiency services. It's took action for infringement and passing off against the Ontario government. For its use of the mark empower me in connection with a website used to educate Ontario electricity ratepayers about the Ontario electricity system and energy conservation. After commencement of the action, the Ontario government requested that the Registrar of trademarks give public notice of Ontario's adoption and use of empower me as an official mark and the registered did so and in a bold move Ontario then argued that the official Mark afforded a complete defense to the infringement action. The court disagreed and said section nine does not read as conferring upon the public authority, any particular protection against claims for trademark infringement. And the Federal Court of Appeal earlier in this year, agreed, and stated that section nine allows public authorities to seek recourse against those who use an official mark it no way does the text confer on the public authority, any particular authority or any on the public authority, any particular protection, I should say, against claims for trademark infringement or other claims under the act. A public authority that chooses to use a mark that is confusing to a registered trademark does so at its own peril, clear legislative wording would be required to effect a different result. We add that the appellant has not persuaded us that the context and purpose of the provisions supports a different interpretation. So section nine protects official marks. But what does that mean? There's no definition in the act. And it is not necessary for the public authority to show that the associated goods or services comply with any prescribed regulations or that the mark is distinctive. In fact, official Mark status can essentially be self bestowed by the public authority. In a case back in 1979, the court went through various factors that enabled it to conclude that something was an official one. The entity in question was a Crown Corporation, and an agent of Her Majesty. The Board of Directors considered consisted of a minister of the crown and other members appointed by the government. And that board adopted a bylaw. With respect to the official mark. There was no question that the use of the official Mark was the same as trademark use. And it was in the competence of the board of directors to do everything that it did. Thus, the Mark was derived from and sanctioned by persons in office and hence was authorized and authoritative precisely within the meaning of the word official. The Mark was self bestowed, but that is what this particular public authority was enabled to do. And similar powers are bestowed on many public authorities. The mark so adopted fell within the dictionary meaning of official.

The public authority can decide, in and of itself that this is an official mark. But then there are two other criteria that must be followed. As I noted at the outset, the official Mark must have been adopted and used by the public authority. Now adopted is not defined in the ACT either. But the courts have said adoption is a low bar, all a party must do is state that it has adopted the mark and in fact, the mere act of requesting public notice would be evidence of adoption. Absent some, unless there's some cogent reason to believe that the request was not authorized. With respect to use, there must be an element of public display. So in the net file case, display of net file on a government website, even though the underlying service was not yet available, constituted use. Unacceptable was the use of Millennium in the phrase look for Millennium celebrations at your local LCBO store, the LCBO being the Ontario retailer of wines and liquors. The court said the display of the sign cannot constitute adoption or use of Millennium by the respondent as an official mark because the word millennium is not distinguished in any manner from the surrounding text. The word as it appears on the sign does not serve to distinguish or identify the respondent or its wares or services, and thus, display of the sign cannot constitute adoption or use of the official mark. In other words, it wasn't good enough to just show that the word appeared in a document. There has to be some attempt to show use as a mark. Use required the use required must be something in the nature of trademark use, ie for the purposes of identifying or distinguishing the services being offered. A really interesting issue under Section nine is what is a public authority. And I quoted a case earlier on to talk a little bit about that. One of the key issues was whether or not the public authority must be a Canadian public authority. And in 2007, the courts held that it must be Canadian prior to that many public authorities not subject to the control of the Canadian government obtained official Mark protection, and they are still listed on the register has holders of official marks. The 2000 case 2007 case that I just mentioned was between Canada Post and the United States Postal Service, the US Postal Service's an independent establishment of the executive branch of the government of the United States of America. Canada Post brought an application in the federal court to challenge the decision of the Registrar of trademarks to give public notice of the adoption and use of 13 official marks by the US Postal Service. These marks included express mail first class mail Priority Mail and delivery confirmation. canadapost asserted that US Postal Service is not entitled to additional marks as it is not a public authority in Canada. So keep in mind up until that point, the registrar was quite happy to treat the US Postal Service as a public authority to qualify for Section nine protection. The court, however, was satisfied that the public authority in question must be a public authority in Canada and the Federal Court of Appeal agreed. In our view to fulfill the intention of Parliament, the government exercising the control must be a Canadian government. Now, the reality is that there are still prohibited marks in the name of non Canadian entities. And we were reminded of that in 2018, in a case involving the American Forestry Association, and not for profit Conservation Association with the principal place of business in Washington, DC. It had requested public notice back in 1998. For the mark relief and the registrar gave public notice a third party ATP applied to register relief in 2015. The official Mark was cited against it, and it couldn't argue around it. So it brought an application in the court to challenge the decision to give public notice on the basis that the American Forestry Association was not a public authority in Canada, and the court agreed, noting that the American Forestry Association is not subject to any government control Canadian government control or funding and according accordingly, that is decision to publish was unreasonable.

And so the official Mark status was canceled. So having established the public authority must be Canadian. The question becomes how do you decide if something is public and relevant factors include our assets to be disposed of at the direction of the government is funding provided by the government is the entity subject to government monitoring, there must also be a benefit to the public from the activities of the public authority. A court recently noted that there must also be ongoing government supervision of activities of the body claiming public authority status. In other words, you can start out as a public authority but lose that status. In a recent case involving a charity, the court was satisfied that the holder of the official Mark was not a public authority because it did not meet the test of significant government control as a charity. But the court also noted that even if the holder of the official Mark was a public authority at the time notice was given. It ceased to be a public authority when its charitable status was revoked, and as such was not entitled to benefit from the official mark. Now, why can't a charity not be a public authority authority was the court noted in 2003, there's no government control over the carrying out of activities in pursuit of its objects, or in the way it conducts its activities. The fact that a charity is obliged to comply, as are all other charities with the law generally relating to charities, including the Income Tax Act does not give rise to sufficient government control, to qualify a charity as a public authority. I mentioned at the outset, the issue of resemblance, the the section nine prohibits the adoption and use of any mark consisting of or so nearly resembling as to be likely to be mistaken for an official mark. Now, the first point to keep in mind is that we're dealing with comparison of the marks you do not take into account the goods and services because the official mark is not limited to any goods or services. The same is true with respect to the nature of the trade. resemblance must be determined by considering whether a person on first impression, knowing the official Mark only, and having an imperfect recollection of it would be likely to be deceived or confused, you don't do a straight comparison of the marks, because that implies close and careful comparison, you look at the marks as a matter of first impression, taking into account that the first element of the mark, maybe the most important element for the purposes of comparison. So by giving you the background on what an official mark is, and who can hold one, I wanted to lay the groundwork for how to challenge an official mark. Assuming you find yourself in the situation where you need to do so. The proper procedure to challenge a decision by the registrar to give public notice of the adoption and use of an official mark is an application for judicial review of the decision in the federal court. An application for judicial review is to be commenced within 30 days after the decision was first communicated to the party, or within such further time as the court may allow. And typically that 30 day period would start to run on the day the public notice is given. But in fact, you may not be aware of the mark until it surfaces during examination. So what do you do then? Well, an extension of time to file an application for judicial review may be granted where it serves the interests of justice. And in fact, the courts have granted extensions, where the application for judicial review was brought years after publication. In part the courts do so because it will be patently unfair and completely contrary to the interests 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. So how can you challenge what are the grounds to challenge the courts have said that you may bring in evidence to show that the Mark was not adopted? Used, you may bring in evidence to show that the entity was not a public authority or he is not currently a public authority. As I mentioned, the Federal Court has held that a public authority must continue to use an official mark to continue to have section nine rights as was make their into course two cases where the Court said section nine is not necessarily an open ended ticket to an exclusive trademark, which might be kept in every used. Another court set official marks cannot simply be appropriated and then sat on so The problem is that if you look at the database, you'll find public notification of official marks in the names of entities that are not controlled by a Canadian government or entities that may no longer exist. Rather than compel interested parties to incur the cost of judicial review. The government has passed legislation that will make it easier for people to challenge official blocks. So Bill C 86. provides that section nine does not apply with respect to a mark if the entity that made the request for the public notice is not a public authority, or no longer exists. In section four on the screen, the government is proposed a methodology for dealing with that issue a request is made to the registrar. We don't know when these provisions will come into force one hoax soon. So what are the takeaways? The trademarks act is official marks very broad protection not limited by the goods or services offered by the owner of the official mark. But should you encounter one, don't give up hope. You may be able to argue around it on the basis that there is not a sufficient degree of resemblance. Or you may or may be able to obtain consent from the owner of the official law. As I said at the outset, typically owners of official marks are reasonable when it comes to providing consent. And if worse comes to worse. There are ways to challenge the official Mark either in the courts or soon by a simple procedure in the trademarks office. Please keep in mind, we're always here to assist. Thank you for listening.