Insight

It’s Official: Options for Challenging “Official Marks” in Canada

“Official marks” are a strangely obscure corner of Canadian intellectual-property law. What are they, what explains their strength and what can a business owner in search of a trademark do to challenge them?

Two griffins on royal crest
JK

Jamie-Lynn Kraft and Philip Lapin

September 30, 2022 12:00 AM

“Official marks” are a unique feature of Canadian trademark law. Many trademark owners, even in Canada, are unaware of their existence. Those who know about them are often unclear about the rights provided and the options available for dealing with citations of (or complaints based on) official marks.

These marks can be a source of great frustration for business owners and others when cited by the Canadian Trademarks Office against an application to register a trademark. However, applicants have several options available to overcome the citation of an official mark.

Recent amendments to the Trademarks Act (which are not yet in force but could optimistically come into effect in late 2023) have codified one of the options that is currently only a matter of Trademarks Office practice and introduced a new mechanism to obtain a remedy currently available only through Canada’s Federal Court.

Background

Although official marks bear some resemblance to standard 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 one. The parties’ goods, services and overall businesses are irrelevant and 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 intellectual-property protection that never expires, is not subject to non-use cancellation and does not undergo substantive examination. Protection for an official mark may be granted even if the mark is, for example, clearly descriptive, deceptive, a surname, a common place name or easily confused 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 this context has been held simply to 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 and that it has public authority status. On the latter point, the office will apply a two-part test to determine if an entity (described below as a “body”) qualifies as a public authority:

  1. a significant degree of control must be exercised by the appropriate government over the activities of the body; and
  2. the activities of the body must benefit the public.

The clearest examples of public authorities are Canadian governments themselves: the federal government and those of the provinces and municipalities. However, the Trademarks Office has also determined that many nongovernmental entities are also public authorities, such as provincial lottery corporations, research companies and organizations including (among others) certain sporting organizations, dairy associations and museums.

Current Options to Challenge an Official Mark

When assessing a citation of an official mark raised by the Trademarks Office as it reviews a trademark application, the first consideration is whether the mark at issue would be “mistaken for” the official mark. In most cases, a putative trademark must be nearly identical to an official mark for its registration to be denied. Accordingly, if the marks at issue are not nearly identical, it may be worth attempting to overcome the objection through argument. If arguments fail, other options are available.

In cases in which an official mark is cited by the Trademarks Office, often the most straightforward remedy is to obtain consent of the official mark’s owner. Relatively often, public authorities are prepared to give their consent—sometimes subject to certain conditions—particularly when the official mark is an ordinary word found in the dictionary 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 based on an official mark can consider two other options. First, the Trademarks Office will withdraw an objection if an applicant provides evidence sufficient for the Registrar to determine that the public authority no longer exists. 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 considered only two grounds of invalidity: that the owner is not a “public authority” in Canada, and that the official mark was not “adopted and used” prior to the Trademarks Office granting official mark status.

Recent Amendments to the Trademarks Act

The act has been amended to add the following subsections (which are not yet in force as of press time, but could optimistically come into effect in late 2023):

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 ideally create a simple, 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 be available only in limited circumstances—namely, in cases in which 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 available at the moment 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 (optimistically in late 2023), it will be possible to invalidate an official mark by filing a request with the Trademarks Office and paying the prescribed fee.

In most cases, a putative trademark must be nearly identical to an official mark for its registration to be denied."

The Trademarks Office has published a draft Practice Notice regarding its 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 regarding evidence of the holder’s status as a public authority. If the notice goes unanswered during the prescribed time, 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.

Jamie-Lynn Kraft has been recognized in The Best Lawyers in Canada® since 2022 in Intellectual Property Law. She is a principal in Smart & Biggar’s Ottawa office. As a trusted advisor, Jamie-Lynn counsels her clients throughout the trademark lifecycle, including clearance, prosecution, opposition and enforcement. Jamie-Lynn is passionate about helping her clients grow their businesses and harness the full potential of their brands.

Philip Lapin has been recognized in The Best Lawyers in Canada® since 2016 in Intellectual Property Law. He is a principal in Smart & Biggar’s Toronto office. With more than 20 years of experience and a high rate of success, he is recognized as one of Canada's leading trademark lawyers. As chair of the firm’s Trademark Operations Group, Philip provides strategic advice on trademark portfolios for many Canadian and multinational corporations.

Headline Image: ISTOCK/EVRENSELBARIS, ISTOCK/TIJANA SIMIC

Related Articles

Hobbling the War Machine


by Shawn C.D. Neylan

Since late spring, the Canadian government has been actively sanctioning business and political entities, as well as numerous individuals, with alleged ties to Vladimir Putin and the Russian military, including some in Belarus. You can’t tell the players without a scorecard—so here’s an overview.

Military tank with prohibited symbol

Growing Canadian Business Abroad


by Didier Culat

Canadian entrepreneurs looking to expand their businesses beyond the geographic confines of their home dominion must consider a vast range of questions to ensure they’re fit to branch out. Here’s a quick primer.

Green arrows rising with Canada in backdrop

The Antipodean Advantage


by Gordon Grieve and Tony Britten-Jones

As the pandemic recedes, Australia remains one of the best countries in which to invest. The commercial law experts at Piper Alderman review the country’s advantages when it comes to outside money looking for outsized returns.

Man pointing to cave wall

Latinflation


by Alejandra Daroch, Domingo Russi and Jaime Carey Astaburuaga

Long a beacon of economic stability in South America, Chile has been buffeted lately by the global rise in inflation. Can a key element of its monetary policy help it weather the storm?

Waves crashing into lighthouse

The Future of Trade is Digital


by Alan de Rochefort-Reynolds, Daniel Allman and Jo Feldman

Digital information increasingly drives bilateral and multilateral trade throughout the Indo-Pacific region. It behooves countries to devise agreements governing the use and exchange of the enormous amounts of vital data generated every day.

Neon colored boxes in circle with black background

Competitive Balance


by David Feldman and Peter Flynn

Major amendments to Canada’s Competition Act were rushed through Parliament this June with scarcely any debate. They will likely have enormous antitrust ramifications—and businesses had better be ready.

Blaring megaphone sounds the alarm

The Carbon Conundrum


by Martin Hamer and Natalie Kopplow

Companies that trade internationally might soon face a “carbon tariff” when importing certain goods into the European Union. Why is the EU doing this—and how will it affect world trade?

Power plant billowing smoke

Rental House of Cards


by Tyler D’Angelo

The pandemic devastated uncountable businesses worldwide. A recent court case involving some of Canada’s most venerable companies and pension funds sheds light on the stringency of the country’s commercial leases—and the judiciary’s reluctance to meddle in sophisticated commercial contracts amid a “black swan” event.

Toppling house of cards

An Employer’s Guidebook to Responding to Online Harassment


by Belle Harris and Brent Siler

Navigating online defamation against your business requires strategic responses. Two employment lawyers guide how to leverage contracts, understand social media limitations and the risks of legal action.

Image of person pushing giant phone with mouth and words coming out

IN PARTNERSHIP

Gust Rosenfeld P.L.C. on Protecting Arizona Employers


by Justin Smulison

Gust Rosenfeld attorney Robert D. Haws discusses emerging trends in employment litigation and how the firm’s Employment and Education Law practice groups have protected clients in and out of Arizona’s courtrooms.

Gust Rosenfeld P.L.C. on Protecting Arizona Employers

IN PARTNERSHIP

The Long, Short, Thick and Thin of It


by Avrohom Gefen

“Appearance discrimination” based on employees’ height and weight is the latest hot-button issue in employment law. Here’s a guide to avoid discrimination.

Woman stands in front of mirror holding suit jacket

IN PARTNERSHIP

Businesses Must Prepare for the New Department of Labor Independent Contractor Rule


by Kirby Black and Steven T. Clark

Two employment law lawyers explain how a new DOL rule making it more likely workers will be classified as employees, rather than independent contractors, has caused legal challenges and prompted businesses to reassess worker status and policies.

Block with outline of person slightly out of place from other blocks

IN PARTNERSHIP

The Wagner Law Group: ERISA and Employment Law


by The Wagner Law Group

For more than 25 years, The Wagner Law Group has combined the personalized attention and reasonable rates of small law firms with the specialization and sophistication of large firms to tackle all of their clients' ERISA and Employment Law needs.

Female Attorney in a Gray Suit Presenting to a Female Judge

IN PARTNERSHIP

5 Things To Do if You’re at Fault in a Car Accident


by Alex De Castroverde

Have you been in a car accident in Las Vegas, NV? Learn more about what to do if you were at fault. Contact a car accident attorney to discuss your case.

Man in blue jacket standing in front of smoking car

IN PARTNERSHIP

What if I’m Partially at Fault for My Car Accident?


by Christopher M. Davis

Experienced personal injury lawyer Christopher M. Davis explains what to do when you are partially at fault in a car accident in the state of Washington.

Man and woman discussing black car crashed into white car

6 Ways a Lawyer Can Help You With Your Medical Malpractice Claim


by Adam Malone

If you believe you have a medical malpractice claim, contact an experienced medical malpractice lawyer. Read on to learn how they can help with your claim.

Doctor in white lab coat showing x-ray to patient in blue scrubs

Trending Articles

Announcing the 2023 The Best Lawyers in America Honorees


by Best Lawyers

Only the top 5.3% of all practicing lawyers in the U.S. were selected by their peers for inclusion in the 29th edition of The Best Lawyers in America®.

Gold strings and dots connecting to form US map

Announcing the 2022 Best Lawyers® in the United States


by Best Lawyers

The results include an elite field of top lawyers listed in the 28th Edition of The Best Lawyers in America® and in the 2nd Edition of Best Lawyers: Ones to Watch in America for 2022.

2022 Best Lawyers Listings for United States

2021 Best Lawyers: The Global Issue


by Best Lawyers

The 2021 Global Issue features top legal talent from the most recent editions of Best Lawyers and Best Lawyers: Ones to Watch worldwide.

2021 Best Lawyers: The Global Issue

The U.S. Best Lawyers Voting Season Is Open


by Best Lawyers

The voting season for the 31st edition of The Best Lawyers in America® and the 5th edition of Best Lawyers: Ones to Watch® in America is officially underway, and we are offering some helpful advice to this year’s voters.

Golden figures of people standing on blue surface connected by white lines

How To Find A Pro Bono Lawyer


by Best Lawyers

Best Lawyers dives into the vital role pro bono lawyers play in ensuring access to justice for all and the transformative impact they have on communities.

Hands joined around a table with phone, paper, pen and glasses

The Best Lawyers in Australia™ 2024 Launch


by Best Lawyers

Best Lawyers is excited to announce The Best Lawyers in Australia™ for 2023, including the top lawyers and law firms from Australia.

Australian Parliament beside water at sunset

How Palworld Is Testing the Limits of Nintendo’s Legal Power


by Gregory Sirico

Many are calling the new game Palworld “Pokémon GO with guns,” noting the games striking similarities. Experts speculate how Nintendo could take legal action.

Animated figures with guns stand on top of creatures

What the Courts Say About Recording in the Classroom


by Christina Henagen Peer and Peter Zawadski

Students and parents are increasingly asking to use audio devices to record what's being said in the classroom. But is it legal? A recent ruling offer gives the answer to a question confusing parents and administrators alike.

Is It Legal for Students to Record Teachers?

Inflation Escalation


by Ashley S. Wagner

Inflation and rising costs are at the forefront of everyone’s mind as we enter 2023. The current volatile market makes it more important than ever to understand the rent escalation clauses in current and future commercial lease agreements.

Suited figure in front of rising market and inflated balloon

The Upcycle Conundrum


by Karen Kreider Gaunt

Laudable or litigious? What you need to know about potential copyright and trademark infringement when repurposing products.

Repurposed Products and Copyright Infringemen

Best Lawyers: Ones to Watch in America for 2023


by Best Lawyers

The third edition of Best Lawyers: Ones to Watch in America™ highlights the legal talent of lawyers who have been in practice less than 10 years.

Three arrows made of lines and dots on blue background

A Celebration of Excellence: The Best Lawyers in Canada 2024 Awards


by Best Lawyers

As we embark on the 18th edition of The Best Lawyers in Canada™, we are excited to highlight excellence and top legal talent across the country.

Abstract image of red and white Canada flag in triangles

8 Different Types of Criminal Defenses in Law


by Best Lawyers

Learn about the different types of criminal defenses available in law, including innocence, self-defense, insanity and more. Protect your rights today.

Silver handcuffs laying on finger printed papers

Wage and Overtime Laws for Truck Drivers


by Greg Mansell

For truck drivers nationwide, underpayment and overtime violations are just the beginning of a long list of problems. Below we explore the wages you are entitled to but may not be receiving.

Truck Driver Wage and Overtime Laws in the US

Choosing a Title Company: What a Seller Should Expect


by Roy D. Oppenheim

When it comes to choosing a title company, how much power exactly does a seller have?

Choosing the Title Company As Seller

The 2024 Best Lawyers in Spain™


by Best Lawyers

Best Lawyers is honored to announce the 16th edition of The Best Lawyers in Spain™ and the third edition of Best Lawyers: Ones to Watch in Spain™ for 2024.

Tall buildings and rushing traffic against clouds and sun in sky