Entities which constitute "public authorities" under the Canadian Trade-marks Act ("Act") can obtain protection for their trade-marks under Section 9(1)(n)(iii) of the Act, in addition to regular trade-mark protection.
The Act does not define what connotes status as a "public authority" but an understanding of who may qualify as such has developed over time before the Federal Court of Canada. Currently, a public authority must be Canadian and subject to significant control by a level of Canadian government, with activities that benefit the public.
A body will not be recognized as a public authority by the Canadian Trade-marks Office merely because it is a private or public foundation, registered charity, non-governmental organization, a not-for-profit agency or holds some other tax-exempt, non-commercial or volunteer status.
A recent decision of the Federal Court, Trial Division in TCC Holdings Inc. v. Families as Support Teams Society led to the quashing of an official mark, F A S T, issued under Section 9 in 1996 after the party holding the mark was found not subject to sufficient government control both in the present and at the time its Section 9 mark was issued.
Families as Support Teams Society ("Families") was a Canadian registered charity at the time the F A S T mark was declared, but evidence before the Court did not demonstrate that Families was under significant government control in 1996, or in the present as it came before the Court. Further, its status as a charity was revoked in 2006 and Families was dissolved in 2007. Accordingly, the Court quashed the F A S T Section 9 mark.
The Families decision is of particular interest because of how it arose. TCC Holdings Inc. ("TCC") had applied to register FAST as a regular trade-mark and its application was blocked by the F A S T official mark. TCC made six attempts to obtain consent to use and registration of FAST from Families, but received no response, which caused Families to bring an application for judicial review of the F A S T official mark.
Families had received Canadian federal government funding which required acknowledgement of the source of the funds in promotional materials, as well as a requirement that workshop attendance records and a report of activities carried out under the funding be submitted to the funding agency. Further, there was evidence of correspondence concerning a possible contractual relationship with another Canadian federal government agency. There was no evidence that such a contract arose and the Court found that the evidence overall did not demonstrate significant control of Families by any level of government.
The Families decision holds lessons for holders of regular trade-mark and official marks:
- A party seeking registration of a regular Canadian trade-mark that finds its application blocked by an official mark has the opportunity to argue for co-existence with the official mark before the Canadian Trade-marks Office if there is sufficient difference between the marks that they would not be mistaken for each other.
- An applicant may also or alternatively seek consent to use and registration of their mark, from the holder of the official mark.
- An official mark registration can block not only registration of a trade-mark but the actual use of the trade-mark in Canada, unless that use predates the publication of the Section 9 mark and so merely abandoning a trade-mark application and initiating use of the mark in the Canadian marketplace without consent is not advised.
- Should arguing for co-existence or attempting to obtain consent to use and registration prove fruitless, the Families decision demonstrates that an applicant and its legal counsel can explore potential weaknesses in the official mark declaration, including whether there is or was significant government control of the holder of the official mark.
- Holders of official marks should note that their status as public authorities, if challenged, may be addressed not only in the immediate term but as it was at the time the official mark was declared. Accordingly, care should be taken to maintain documentation demonstrating significant and ongoing control by a level of Canadian government from the time of issuance of the official mark and going forward.