Official marks are a distinct aspect of Canadian trademark law. Many business owners, even in Canada, are unaware of them and those who are may not fully understand the scope of protection they provide or how to respond when one is cited.
- Understand how Canadian official marks, distinct from traditional trademarks, affect your trademark applications—nearly identical marks can pose legal challenges.
- Upcoming amendments to the Trademarks Act introduce more streamlined options for addressing official mark disputes, potentially reducing reliance on court actions.
- Only Canadian public authorities can obtain these marks, yet businesses must prepare to tackle issues during the trademark process involving indefinite duration and broad scope.
- Practical strategies exist to navigate official mark citations, providing pivotal opportunities for businesses to protect their brand investments efficiently.
Impact on Trademark Applications
Official marks can create challenges when cited by the Canadian Trademarks Office against a trademark application. However, applicants have several ways to respond and, in some cases, overcome such citations.
Recent amendments to the Trademarks Act (R.S.C., 1985, c. T-13), not yet in force, will codify one existing option and introduce a new mechanism that is currently available only through the Federal Court.
How Official Marks Differ From Trademarks
Although official marks share some similarities with traditional trademarks, they operate under a different legal framework. An official mark can prevent the use or registration of an identical mark or one that is nearly identical, even when the goods or services are unrelated.
Unlike trademark applications, the assessment does not consider whether consumers would be confused. The focus is instead on whether the marks could be mistaken for one another.
Key differences from traditional trademarks:
- Do not expire
- Are not subject to cancellation for nonuse
- Do not undergo substantive examination
- May be granted protection even if the mark is descriptive, misleading, a surname, a geographic name or similar to an existing registered trademark
Legal Basis for Official Marks
Official marks are governed by the Trademarks Act (R.S.C., 1985, c. T-13). Their legal foundation appears in paragraph 9(1)(n)(iii), which restricts the adoption of certain marks in connection with a business.
That provision states:
“No one may adopt, in connection with a business, any mark that is identical or likely to be mistaken for a badge, crest, emblem or mark used by a Canadian public authority and officially recorded by the Registrar.”
Under this provision, only Canadian public authorities may obtain official mark protection. For an official mark to be enforceable, it must have been “adopted and used” by the public authority. In practice, this requirement has been interpreted to mean that the mark was publicly displayed.
Before granting protection, the Canadian Trademarks Office requires evidence that the mark has been publicly displayed and that the entity requesting protection qualifies as a public authority.
Who Qualifies as a Public Authority
Only entities that meet the public authority standard can obtain protection for official marks. The Canadian Trademarks Office applies a two-part test to determine qualification:
Criteria:
- A significant degree of government control over the entity’s activities.
- Activities that benefit the public.
The clearest examples are Canadian governments at the federal, provincial and municipal levels. The definition is not limited to government bodies. The Trademarks Office has also recognized certain non-governmental organizations, depending on their structure and purpose, including:
Examples of recognized public authorities:
- Provincial lottery corporations.
- Research organizations.
- Museums.
- Other entities serving a public function under meaningful government oversight.
Options for Responding to an Official Mark
When the Canadian Trademarks Office cites an official mark during a trademark application review, the first consideration is whether the marks would be “mistaken for” one another. Typically, a trademark is blocked only if it is nearly identical to the official mark.
If the marks are not nearly identical, applicants may respond through written argument. If that approach is unsuccessful, additional options include:
Available responses:
- Obtain consent from the official mark owner. Public authorities may grant consent, particularly when the mark is a common dictionary word and the application covers unrelated goods or services. Consent may include conditions.
- Demonstrate the public authority no longer exists. If sufficient evidence is provided, the Trademarks Office may withdraw the objection.
- Challenge the validity through the Federal Court of Canada. This can involve a judicial review of the Registrar’s decision to give public notice of the mark or a request for a declaration that the official mark is invalid.
To date, the Federal Court has considered only two grounds for invalidity:
- The owner does not qualify as a public authority in Canada.
- The mark was not adopted and used before official mark protection was granted.
Amendments to the Trademarks Act
Amendments to the Trademarks Act have been enacted but are not yet in force. These amendments codify one option that has historically been available only through the courts and introduce a new administrative process for addressing official marks.
Under the amended framework, certain challenges that previously required a proceeding before the Federal Court may be addressed through the Trademarks Office. This approach is intended to provide a more structured process for resolving disputes involving official marks.
Once in force, these amendments are expected to affect how applicants respond to official mark citations and may reduce reliance on judicial proceedings.
Practical Considerations
Official marks occupy a distinct position in Canadian trademark law and can create significant obstacles during the trademark application process. Their broad scope, indefinite duration and limited avenues for challenge set them apart from traditional trademarks.
Although options exist for responding to official mark citations, the appropriate approach depends on the specific facts, including the status of the public authority and the nature of the mark. Amendments to the Trademarks Act may further influence how these issues are addressed once in force, highlighting the need for careful analysis whenever official marks arise.
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.
