Below is an excerpt from John McKeown’s July 2018 Monthly IP Blog.
As previously mentioned, the concept of “Official Marks” is important in understanding the Canadian Trademark system. There are a significant number of these marks in Canada and their existence can create substantial problems for brand owners or others seeking new marks. They can also cause problems for applications for a trademark or registrations filed or obtained prior to the filing of the official mark since the publication of the official mark may preclude expansion and, in the case of a pending application, registration but not use of the mark.
The term “Official Mark“ is used to describe marks adopted and used by a public authority in Canada as a mark for goods or services. A request for an official mark may only be filed by a public authority.
In considering what is required to be shown to be a “public authority”, the courts have found that there must be a significant degree of public control in Canada and the entity must not exist for private profit. In order to satisfy this test there must be power which enables the government, directly or indirectly through its nominees, to exercise a degree of ongoing influence in the entity’s governance and decision-making.
When an application for an Official Mark is submitted, the Registar of Trade-marks must be satisfied that the applicant is a public authority and must give public notice of the adoption and use of the mark by the public authority. Such applications are not subject to limitations relating to registrability and, for example, an official mark may be clearly descriptive. In addition, official marks are not subject to opposition proceedings.
There are few, if any, limitations on what constitutes an official mark. It is not necessary that the mark have the connotation of officiality. An official mark must have been adopted and used in Canada in association with goods or services before a request for publication is made. The Registrar of Trade-marks requires that evidence of adoption and use of an official mark, which shows an element of public display, be provided as part of the application.
The Act forbids the adoption of a trademark so nearly resembling as to be likely to be mistaken for a mark adopted by a public authority in respect of which the Registrar has given public notice. But it does not operate retroactively to prohibit the adoption of a mark. As a result, there is nothing to prevent the continued use of a trademark adopted or registered before the publication of a similar official mark. However, the existence of such an official mark will preclude the expansion of an existing registration to additional goods or services or any pending application which was not registered at the time of the publication of the official mark even if previously adopted, used and applied for.
The test of resemblance “consisting of, or so nearly resembling as to be likely to be mistaken for” is different from the test for registered trademarks under the Act and the absence of similarity of services or goods between the parties is irrelevant. The Court will consider whether a person, on first impression having only an imperfect recollection of the official mark, would likely be confused by the impugned mark.
In order to challenge the decision of the Registrar to publish an official mark an application must be brought for judicial review of the decision in the Federal Court. Unfortunately these marks can be difficult to attack. In some cases their owners will consent to the registration and use of new marks but not always. Interested parties have sought legislative change but, to date, without success.
If you have any questions or concerns please contact me at mckeown@gsnh.com.
Canada: How to Brand a Cannabis Product
As you may be aware Canada is in the process of legalizing cannabis. I recently wrote a short article about how to brand a cannabis product in light of the extensive legislative constraints. The article is available here for your interest.
When the article was written there were outstanding issues between Parliament and the Senate. These issues have been resolved in favour of Parliament but the implementation date for the legislation has been deferred from July until October 17, 2018.