Official Marks In Canada: The Most Significant Change In Decades

After decades of urging by Canadian trademark professionals to change the regime involving official marks in Canada, a significant change came into effect on April 1, 2025.

Official marks are a somewhat unique creature of Canadian trademark law.  Pursuant to section 9 of Canada’s Trademarks Act (the “Act”), the Registrar of Trademarks may give public notice of the adoption and use by public authorities of official marks.  Once such notice is given, it is prohibited in Canada for anyone to adopt a trademark which is the same as or likely to be mistaken for the official mark.

For the prosecution of Canadian trademark applications, the appearance of an official mark could block even a pending application.  Official marks are also not restricted to any goods or services.

While the citation of an official mark during prosecution of an application could be overcome by the public authority providing its consent to the application against which its official mark was cited, issues often arose with official marks, where the public authority did not respond to requests for consent or in many cases no longer used the official mark or no longer existed.

Moreover, while most trademark owners understand the need for special protection for official marks of various governmental authorities, for many years the Registrar took a more liberal view of what constituted a “public authority”.  Over the years, the Federal Court of Canada has issued rulings tightening up the definition of what constitutes a “public authority” for the purposes of section 9 of the Act.  The Registrar has followed such rulings but the problem remained that many official marks remained on the Register and were in the names of entities which no longer qualified as public authorities or indeed no longer existed.

Since official marks are not subject to summary cancellation proceedings under section 45 of the Act in the same way as regular trademarks, the only way to get rid of the citation of an official mark where the owner was not responsive or no longer existed (or no longer qualified as a public authority) would be to go to Federal Court, a time-consuming and expensive option.

For as long as this author can remember (and I have been practicing Canadian trademark law for over 36 years), Canadian trademark owners have been asking for reforms to the official mark regime.  In that regard, the Trademarks Office announced changes to the official marks regime which took effect on April 1.

Subsection 9(4) of the Act now provides that the Registrar may give public notice that the statutory protections do not apply with respect to a particular official mark. This notice may be given if the relevant holder of the official mark that made the request is not a public authority or no longer exists.

A process is in place whereby on receipt of a request and payment of the prescribed fee, if the Registrar is satisfied, a notice will be sent to the holder of the official mark requesting evidence of the holder's public authority status.  The requesting party must provide information or evidence demonstrating that the official mark holder is not a public authority or no longer exists.

The Registrar retains discretion whether to send a notice to the official mark holder. It appears that the Registrar will not do so where:

1. the official mark holder has previously been requested to provide evidence as a result of a request that remains pending or if the Registrar has determined that the holder is a public authority in the preceding one year;
2. the request was received within one year of the official mark’s existence; or
3. the holder of the official mark is listed as the Crown, including any current or previous department, agency, crown corporation or special operating agency or municipal government entity or the request does not raise any doubt respecting the holder's public authority status or its existence.

If, after reviewing the request, the Registrar's initial assessment is that the holder is not a public authority or no longer exists, the Registrar will generally send a notice to the official mark holder requesting evidence of the holder's public authority status, giving them three months to reply with evidence of their status as a public authority or to request an extension of time to do so. The Registrar will not require evidence of adoption and use of the official mark, however.

If the holder does not provide any evidence in response to the notice within the allotted time, the Registrar will generally give public notice that the protections of the Act do not apply with respect to that mark.   If the holder does not respond to the notice in an acceptable manner, the Registrar will send on his or her own initiative a notice to the holder requesting evidence of the holder's public authority status with respect to all official marks listing the same holder.

For trademark owners, this change will bring some relief to trademark owners whose ability to adopt their trademarks in Canada have been blocked by certain official marks. 

For owners of official marks which still exist and which continue to use their marks, but which may no longer qualify as public authorities under the Federal Court’s rulings, the option still remains to assert common law rights in their marks as trademarks, or to apply to register them as trademarks or certification marks as the case may be.

In either event, the net result will likely be a Register which more accurately reflects the rights of both Canadian trademark owners and public authorities.

Summary By: Gary Daniel