The Convention on the Control and Marking of Articles of Precious Metals is an international treaty on the cross border trade in articles made of gold, silver, platinum and palladium. Currently, there are 19 signatories, mostly from the European Union, and two more countries are in the process of acceding to the Convention, which has been in force since 1975. The Convention’s primary purpose is to protect consumers from poor quality goods through the use of an international hallmark (the Common Control Mark or CCM) that ensures the marked articles have been checked for purity.
Between November 2010 and February 2011, over 150 official marks were advertised by the Canadian Trade-marks Office (TMO) on behalf of members of the Convention, who have adopted and used various versions of the CCM to indicate different degrees of purity for each of the precious metals covered by the Convention.
Some examples of these official marks, as advertised by the TMO, are:
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Official marks, provided for in Section 9 of the Canadian Trademarks Act, grant extraordinary protection to their owners, far beyond the rights granted to the owners of conventional trademarks. The protection given to official marks is not limited to a specified list of wares and services nor is it limited in time, and official marks are not easily challenged or invalidated. Furthermore, an official mark need not meet the usual tests for trade-mark registrability (provided it has been adopted and used); it may be primarily merely a name, clearly descriptive, not distinctive and/or confusing with a previously registered mark and still be given official mark status. As a result, even the Federal Court of Appeal of Canada has stated that official marks “have the capacity to injure both existing trade-mark owners and the public.”1
Official marks, provided for in Section 9 of the Canadian Trade-marks Act, grant extraordinary protection to their owners, far beyond the rights granted to the owners of conventional trade-marks.
Section 9(1)(n) of the Act provides in part as follows:
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
(iii) adopted and used by any public authority, in Canada as an official mark for wares or services,
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;
Although the challenges to official marks and the opportunities for trade-mark applicants to distinguish their trade-marks from official marks appear to be increasing, trade-mark applicants in Canada must nonetheless be wary of the very broad scope of protection and substantial benefits given to the official marks used by public authorities.