It’s Official (Marks). CIPO May Trim Entities Which Are No Longer Public Authorities Or Are Inactive

Certain amendments to Canada's Trademarks Act are expected to come into force shortly, which will have a significant impact on the ability to clear "deadwood" official marks currently on the Register.

Canada’s Trademarks Act has for many years provided for a special category of marks, referred to as official marks, which can be obtained by “public authorities”.  Examples of public authorities include branches of the federal, provincial and municipal governments.  Official marks are not restricted to any particular goods and services and are not subject to renewal or susceptible to summary cancellation (s. 45) proceedings. 

Once an official mark is published, the holder of the official mark is afforded very broad protection.  In particular, no one can subsequently use or register a mark which is identical to, or closely resembles, the official mark, regardless of the goods or services, unless they obtain the consent of the official mark holder.   Consent may be difficult to obtain, especially in cases where the official mark holder cannot be located or declines to consent.  In those cases, the only remedy that trademark applicants currently have is to seek relief in the Federal Court.  Most applicants in our experience do not wish to expend the cost or time to do so.

In the past, numerous not-for-profit entities, trade associations and similar entities have obtained official marks on the basis of being a “public authority”.  Over time, the Federal Court has developed a two-part (and stricter) test for what constitutes a “public authority” for the purposes of obtaining an official mark.  That test requires that: (1) a significant degree of control is exercised by the appropriate government over the activities of the body; and (2) the activities of the body benefit the public.

As a result of the stricter test, some entities which formerly qualified as public authorities no longer so qualified, and yet, their official marks still remained on the Register.  As well, since there was no need to renew or maintain an official mark, public authorities which ceased to exist continued to have official marks indefinitely.   This created a major problem for applicants who wished to register their marks but were blocked by an official mark belonging to an entity who was no longer a pubic authority or had ceased to exist.  Currently, only the Federal Court has the authority to cancel an official mark on either of these bases.   

However, this will soon change.

Proposed New Procedure to Remove Official Marks

Subsection 9(4) of the Trademarks Act gives the Registrar of Trademarks the authority to give public notice that the protections of the Act which govern official marks do not apply to a particular official mark.  The Registrar may give such notice if the holder of the official mark is not a public authority or no longer exists.  This section, however, is not yet in force.

In anticipation of this section coming into force in the near future, the Canadian Intellectual Property Office (CIPO) has recently released a draft of a Practice Notice introducing a new procedure on how it will exercise its authority. 

The proposed Practice Notice will provide that the Registrar may cause a notice to be sent to the holder of the official mark, requesting evidence of its status as a public authority.  Interested third parties may ask the Registrar to issue such a notice, upon payment of a fee and providing information or evidence that the official mark holder is not a public authority or no longer exists.  The Registrar will determine whether a notice is necessary.  Among other reasons, the Registrar will deem a notice unnecessary if the official mark holder is either the subject of a pending proceedings or the official mark was previously the subject of such a request and the Registrar determined that the holder is a public authority in the preceding year.

Where the Registrar issues a notice to the holder of the official mark, the holder will have three months to respond, subject to the ability to obtain one extension of time for a further three months (in this respect, the process is somewhat similar to summary cancellation (s. 45) proceedings for regular trademarks).

If the holder does not respond or does not file satisfactory evidence by the deadline, the Registrar will give pubic notice that, in effect, the official mark is inactivated.  Moreover, if the Registrar is still of the view that the holder is not a public authority, the Registrar will send a notice to the holder requesting evidence of the holder’s pubic authority status with respect to all official marks in its name.

It should be noted that, in contrast to summary cancellation (s.45) proceedings, the issue is not whether the official mark is still in use.  The only issue is whether or not the holder still exists, or whether, if it exists, it qualifies as a public authority.

Impact of This New Proposed Procedure

The combination of s. 9(4) of the Act and the Practice Notice, when they come into force, will be a small step to clean up the Register of Trademarks of “deadwood” official marks and will provide a quicker and more cost-effective option for applicants for Canadian trademark registrations to overcome citations of official marks in certain cases.

While there are obvious benefits to this new procedure, it will come at a cost to some existing official mark holders who, although they may no longer qualify as a public authority under the stricter test, have been relying on their official mark as a way to keep check on who they will allow (through their consent) to register an identical or similar mark to their official mark.  With this new procedure, applicants will be able to bypass the need to request consent from official mark holders who are no longer public authorities, by seeking “inactivation” of those official marks directly from the Registrar without having to go to Federal Court.   Thus, it is important that entities who are still in existence and have official marks seek legal advice to confirm whether they still qualify as public authorities.  This is especially important for entities such as not-for-profit companies, charities, trade associations and other similar entities.  If they no longer qualify, they should consider applying to register their official marks as regular trademarks.

Summary By: Gary Daniel and Hung Nguyen