Canada’s Trade-marks Act provides a unique protection of “official marks” under section 9(1)(n)(iii). This section prohibits anyone from adopting in connection with a business any mark[1] consisting of, or so nearly resembling as to be likely to be mistaken for, any badge, crest, emblem or mark adopted and used by a “public authority” in Canada as an official mark in respect of which the Trade-marks Registrar has given public notice of such adoption and use. 

An official mark holder is provided an exceptional set of rights – the official mark broadly covers all goods and services regardless of how the official mark is used. Further official mark applications are not subject to opposition and are not subject to renewal. As a result, official marks have been the subject of some controversy with trade-mark practitioners and trade-mark owners in Canada (see our previous post on the matter).  That being said, it is possible to remove an official mark by way of judicial review; however, such proceedings will only be successful in cases where the official mark holder did not or no longer meets the requirements for such exceptional rights.

In one recent example, Starbucks (HK) Limited (“Starbucks”) was successful in its judicial review of an official mark (Starbucks (HK) Limited v. Trinity Television Inc., 2016 FC 790) held by a charitable organization, Trinity Television Inc. (“Trinity”).

On April 10, 2001, Trinity filed a request pursuant to section 9(1)(n)(iii) that the Trade-marks Registrar give public notice of its adoption and use of the mark NOWTV as an official mark in Canada.  Trinity was a registered charity in Winnipeg, Manitoba that amongst other things, produced and distributed television programs that conveyed Christian teachings.  On June 20, 2001, the Trade-marks Registrar accepted Trinity’s request and advertised Trinity’s adoption and use of NOWTV as an official mark (No. 0913106).

Over 12 years later, Starbucks filed an application in Canada to register a design mark containing the words NOW TV (App. No. 1649254) in association with a variety of goods and services.  Starbucks’ trade-mark application was refused pursuant to section 9(1)(n)(iii) on the basis that the proposed mark was consisting of, or so nearly resembling as to be likely to be mistaken for, Trinity’s NOWTV official mark.

To overcome the section 9(1)(n)(iii) objection, Starbucks filed an application in the Federal Court for judicial review of the Trade-mark Registrar’s decision to advertise Trinity’s adoption and use of NOWTV as an official mark. However, Starbucks had a few hurdles to overcome:

1.            The Federal Courts Act provides that an application for judicial review can only be only be made by someone with standing – i.e. directly affected by the matter in respect of which the relief is sought.

2.            The Federal Courts Act also provides that any applications for judicial review generally must be filed within 30 days of the decision at issue – a time period that had already passed for Starbucks.

3.            To be successful in its application, Starbucks had to convince the Court that the Trade-mark Registrar’s decision to advertise Trinity’s adoption and use of NOWTV as an official mark was unreasonable. 

Justice Russell heard the application for judicial review.  On the issue of standing, Justice Russell held that Starbucks clearly had standing to bring the application as it had suffered a direct adverse impact from the Registrar’s decision (i.e. the official mark prevented Starbucks from registering its trade-mark).

On the issue of timing, Justice Russell held that it was in the interests of justice to grant an extension of time for Starbucks to commence the judicial review application for several reasons: (i) Starbucks had a strong case on its merits; (ii) Trinity did not participate in the judicial review application and would not be prejudiced; (iii) Starbucks commenced the judicial review application within a reasonable amount of time from the official mark being cited against its application; (iv) Starbucks would be significantly prejudiced if disallowed from proceeding with the application as there is no other means of challenging the official mark; and (v) it would be unfair for Trinity to maintain an official mark if it did not meet the requirements for such exceptional rights.

As to the merits of the application, Justice Russell found the Registrar’s decision to have been unreasonable. There is clear law establishing that a “public authority” is an entity that must (a) be subject to significant governmental control and (b) engage in activities that benefit the public. The jurisprudence has also established that status as a registered charity is in itself insufficient to constitute an entity as being a “public authority”. In this case, the mere fact that Trinity was a registered charity was insufficient to meet the definition of “public authority” and as such, the Registrar should not have granted Trinity’s official mark request. It was further noted that Trinity sold its business to Rogers in 2005 and no longer had an interest in the official mark.

As a result of these findings, Justice Russell ordered that the Registrar’s decision granting NOWTV as an official mark be quashed and set aside, with the public notice of NOWTV as an official mark on June 20, 2001 as having been of no effect.

Justice Russell also made reference to an earlier judicial review decision involving a similar situation with an official mark – TCC Holdings Inc. v. The Families as Support Teams Society (2014 FC 830).  In that case, Justice Brown found that the mark F A S T used by The Families as Support Teams Society (“FAST Society”) was improperly granted official mark status by the Trade-marks Registrar.  Although FAST Society was a registered charity and had received funding from the Department of Canadian Heritage, it lacked the requisite “ongoing governmental supervision” or “significant government control” to constitute a “public authority”.  As such, FAST Society was not a public authority in Canada at the time the Registrar published notice of its adoption and use of the F A S T mark. In addition, even if FAST Society was considered a public authority at the time of the Registrar’s decision, FAST Society subsequently ceased to be a “public authority” when it had its charitable status revoked and was dissolved. In the circumstances, Justice Brown quashed and set aside the Registrar’s decision and the public notice of F A S T being adopted and used as an official mark was rendered ineffective.

The foregoing cases illustrate an effective option for trade-mark practitioners and trade-mark owners in Canada to remove official marks that do not meet the “public authority” requirements from the trade-marks register. It is also a cautionary tale to official mark holders to ensure that the “public authority” requirements of government control and public benefit are met at the time of the Registrar’s advertisement of the official mark and that the “public authority” requirements are subsequently maintained.