In See You In – Canadian Athletes Fund Corporation v. Canadian Olympic Committee, 2007 FC 406, the Federal Court of Canada quashed the Registrar's decision to grant Official Mark protection in the absence of adequate evidence of adoption and use of the marks.
On October 13, 2004, the Registrar gave public notice in the Canadian Trade-Marks Journal of the adoption and use of three Official Marks owned by the Canadian Olympic Committee (COC): SEE YOU IN TORINO, SEE YOU IN BEIJING and SEE YOU IN VANCOUVER. In so doing, the Registrar effectively blocked certain applications for similar and identical trade marks previously filed by See You In – Canadian Athletes Fund Corporation (SYI Fund). SYI Fund requested judicial review of the Registrar's decision to publish the Official Marks.
Section 9(1)(n)(iii) of the Canadian Trade-marks Act precludes the adoption of any mark consisting of, or so closely resembling as to be likely to be mistaken for, an Official Mark in respect of which the Registrar has given public notice. If the mark was already in use at the time public notice is given, the mark may continue to be used on the same wares and services, but it cannot be used on any other wares and services, or registered, without the Official Mark owner's consent.
To qualify for publication, an Official Mark must have been adopted and used by a Canadian public authority. While the Registrar generally requests substantive evidence that the requesting party qualifies as a public authority, an unsworn statement that the mark has been adopted and used is typically accepted in satisfaction of the latter requirement.
In the present case, the Federal Court took issue with the fairness of the Registrar's process, and held that the decision to publish COC's Official Marks without some inquiry into their adoption and use, particularly given SYI Fund's pending applications for identical trade marks, was neither correct nor reasonable. The Trade-marks Act does not define "adoption" and "use" in respect of Official Marks; however, the Court decided that there must be an element of public display in order for this requirement to be meaningful. In this case, while there had been internal use in discussions and documents, and an order had been placed for some promotional items bearing the marks, such internal use was considered insufficient to constitute adoption and use.
The Court held that the COC qualified as a Canadian public authority, which requires that the organization be under a significant degree of governmental control and exist for the public benefit. The Court took the opportunity to remark, however, that an Official Mark holder's actions in attempting to take away another party's trade mark rights do not benefit the public.
This case provides guidance on what constitutes "adoption and use," but may stiffen the requirement by calling for documentary evidence. The case also offers some interesting commentary on the arguable unfairness of the Official Mark regime in offering scant protection to prior trade mark rights.
An appeal to the Fedaral Court of Appeal was filed on May 17, 2007.