Section 9(1)(n)(iii) of the Trade-marks Act, R.S.C. 1985, c. T-13, states that "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 […] any badge, crest, emblem or mark […] 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 […] the public authority, given public notice of adoption and use."

Once notice of adoption and use by a public authority has been given by the Registrar of Trade-marks, no trade-mark violating Section 9(1)(n)(iii) can be registered. However, continued use of such marks is acceptable, if such use commenced prior to the public notice of adoption and use by the public authority, and is made without expanding to additional wares or services.

The case See You In – Canadian Athletes Fund Corporation v. Canadian Olympic Committee, [2007] F.C. 406, in which the decision of the Honourable Mr. Justice Phelan was publicly released on April 18, 2007, relates to an application for judicial review of the decision of the Registrar of Trade-marks to publish notice of adoption and use by the Canadian Olympic Committee ("COC") of the official marks SEE YOU IN TORINO, SEE YOU IN BEIJING, and SEE YOU IN VANCOUVER (the "SEE YOU IN marks"). The COC, which has a fairly large portfolio of official marks that it has actively enforced, had requested publication of notice of its adoption and use of the SEE YOU IN marks in August of 2004, and the Registrar gave such notice on October 13, 2004. See You In – Canadian Athletes Fund Corporation ("SYI") engages in fundraising activities to aid Canadian athletes and had in October, 2003 filed applications for registration of those same three marks for use in association with a wide variety of wares and services.

As noted above, to secure publication of notice by the Registrar an entity must be a "public authority" and must have "adopted and used" the mark in Canada as an official mark for wares or services. While it is the practice of the Office of the Registrar to closely scrutinize whether or not an entity meets the definition of a "public authority," assertions of adoption and use, often provided by counsel, have been accepted without a requirement for any supporting evidence.

With respect to this disparity Mr. Justice Phelan noted that "the legislation does not create a reason for such differential treatment nor a justification for such differentiation" and further stated that "if a requester for an official mark is required to establish that it is a public authority, it must also establish its adoption and use."

In this case, the court upheld the Registrar's finding that the COC is a public authority as it meets the test of being under a significant degree of public control and existing for the public benefit.

In respect of adoption and use, the Court found that SYI had put into issue the actual adoption and use by the COC of the SEE YOU IN marks by filing affidavit evidence in this application for judicial review and that the COC had "the burden of proving that the official mark was adopted and used by the date of the public notice."

The COC submitted affidavit evidence that the SEE YOU IN marks had been extensively used in the COC's internal correspondence, as well as that the SEE YOU IN marks had been used on pens and flashlights, producing with the affidavit an invoice indicating an order date of August 31, 2004. SYI suggested, based on notations on the invoice, that these items would not have been received by the COC until after date of public notice. On cross-examination, the COC's witness refused to provide further information with regard to use of the SEE YOU IN marks outside of the COC.

Mr. Justice Phelan found that the COC failed to provide adequate evidence to show adoption and use of the SEE YOU IN marks prior to the date of public notice, based on Sections 3 and 4 of the Trade-marks Act, from which Mr. Justice Phelan noted that a "common feature of both 'use' and 'adoption' is that there is an element of public display, of which there was none established in this case." Mr. Justice Phelan also found that the existence of SYI's applications for registration of the SEE YOU IN marks should have led the Registrar to more closely scrutinize the COC's requests. In view of these findings, the decision of the Registrar to publish was quashed.

The Canadian Intellectual Property Office has yet to provide guidance as to any changes in their practice in view of this case and may or may not do so. However, public authori­ties or entities otherwise capable of protection under Section 9 of the Trade-marks Act should, in any event, be prepared to provide evidence of the status that allows them protection, as well as evidence of adoption and use – i.e., with an element of public display – of their marks.