Philip Lapin Jamie-Lynn Kraft September 5 2022 It's official: options for challenging "official marks" in Canada Smart & Biggar | Intellectual Property - Canada Philip Lapin , Jamie-Lynn Kraft Intellectual Property IntroductionBackgroundCurrent options available to challenge official mark citationsRecent amendments to Trademarks ActCommentIntroduction"Official marks" are a unique feature of Canadian trademark law. Many trademark owners, even in Canada, are unaware of official marks. Those who are aware are often unclear about the rights provided and the options available for dealing with citations of (or complaints based on) official marks.Official marks can be a source of great frustration when cited by the Canadian Trademarks Office against an application to register a trademark. However, applicants have several options available to them to overcome a citation of an official mark.Recent amendments to the Trademarks Act (which are not yet in force) have:codified one of the options that is currently only a matter of Trademarks Office practice; andintroduced a new mechanism to obtain a remedy that is currently only available through the Federal Court.BackgroundAlthough official marks 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. It is worth repeating that the parties' goods, services and businesses are irrelevant and are ignored in the assessment of the "mistaken for" test. The "confusion" test relevant for comparing trademarks does not apply in the case of official marks.Official marks represent a surprisingly significant form of IP protection that never expires, is not subject to non-use cancellation and does not undergo substantive examination. It is also worth noting that protection for an official mark may be granted even if the mark is, for example:clearly descriptive;deceptive;a surname;a common place name; orconfusing with prior registered trademarks."Official marks" are described under paragraph 9(1)(n)(iii) of the Trademarks Act, which reads as follows:9(1) No person shall adopt in connection with a business, as a trademark 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 provision, only Canadian "public authorities" (as further described below) can obtain protection for official marks. To be enforceable, the mark must have been "adopted and used" by the public authority. The term "adopted and used", in the context of official marks, has been held to simply mean that the mark was publicly displayed.Before granting an official mark, the Trademarks Office requires evidence demonstrating:that the mark has been publicly displayed; andpublic authority status.On this second point, the Office will apply the following two-part test to determine whether an entity (described below as a "body") qualifies as a public authority:A significant degree of control must be exercised by the appropriate government over the activities of the body.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:provincial lottery corporations;Canadian research companies; andmany other organisations, including, for example, certain:sporting organisations;dairy associations; andmuseums.Current options available to challenge official mark citationsWhen assessing a citation of an official mark raised by the Trademarks Office during examination of a trademark application, the first consideration is whether the mark in issue would be "mistaken for" the official mark. In most cases, a trademark must be nearly identical to an official mark in order for its registration to be prohibited. Accordingly, if the marks in issue are not nearly identical, it may be worth attempting to overcome the objection through argument. However, if arguments fail or are unlikely to succeed, other options are available.In cases where an official mark is cited by the Trademarks Office, often the most straightforward option to overcome the objection is to obtain the consent of the owner. Relatively often, public authorities are prepared to grant their consent, sometimes subject to certain conditions, particularly when the official mark is an ordinary dictionary word and the goods and services listed in the application are unrelated to the public authority's activities.Where a letter of consent is unavailable, those facing an objection on the basis of an official mark may wish to consider two options.First, the Trademarks Office will withdraw a citation (ie, an objection) if an applicant provides evidence sufficient for the registrar to determine that the public authority no longer exists (see part 4.7.14 of the Trademarks Examination Manual).Second, a party can challenge the validity of an official mark by bringing a proceeding in the Federal Court of Canada for judicial review of the registrar's decision to give public notice of the official mark (or seeking a declaration that the official mark is invalid). To date, the Federal Court has only considered two grounds of invalidity – namely, that:the owner is not a "public authority" in Canada; andthe official mark was not "adopted and used" prior to the Trademarks Office granting the official mark status.Recent amendments to Trademarks ActThe Trademarks Act has recently been amended to add the following subsections (which are not yet in force at the time of writing):9(3) For greater certainty, and despite any public notice of adoption and use given by the Registrar under paragraph (1)(n), subparagraph (1)(n)(iii) does not apply with respect to a badge, crest, emblem or mark if the entity that made the request for the public notice is not a public authority or no longer exists.(4) In the circumstances set out in subsection 9(3), the Registrar may, on his or her own initiative or at the request of a person who pays a prescribed fee, give public notice that subparagraph (1)(n)(iii) does not apply to the badge, crest, emblem or mark.When in force, these provisions will hopefully create a simple and efficient mechanism to allow the Trademarks Office to declare that an official mark is no longer valid or enforceable. However, as noted above, such a declaration will only be available in very limited circumstances – namely, in cases where the owner of the official mark is not a public authority or no longer exists.There is currently no simple mechanism to have an official mark declared invalid by reason of the owner not qualifying as a "public authority". The only method currently available is to file an application for a declaration or judicial review with the Federal Court. However, once subsections 9(3) and 9(4) are in force, it will be possible to invalidate an official mark by filing a request with the Trademarks Office and paying the prescribed fee.The Trademarks Office has published a draft practice notice regarding the Office's proposed implementation of subsection 9(4). According to the draft, the request (which should be accompanied by evidence) will be reviewed and, if the Office is satisfied, it will send a notice to the holder of the official mark requesting evidence of the holder's public authority status.If the notice goes unanswered during the prescribed time period, or if the evidence is insufficient to meet the relevant test, then the status of the official mark will be amended to read "inactivated".The ability to challenge an official mark through an administrative mechanism before the Trademarks Office will undoubtedly be welcomed by many brand owners.CommentBecause the law and practice surrounding official marks are unique to Canada (and evolving), 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 on this topic please contact Philip Lapin or Jamie-Lynn Kraft at Smart & Biggar by telephone (+1 613 232 2486) or email ([email protected] or [email protected]). The Smart & Biggar website can be accessed at www.smartbiggar.ca.