Official marks are an exotic species in the world of trademarks and a purely Canadian invention. They will soon become more vulnerable than ever due to the coming into force at some point in 2023 of a new provision of the Trademarks Act allowing third party challenges.
But what are official marks?
The official marks regime aims to prevent “badges, crests, emblems and marks” used by entities controlled by a Canadian government from being appropriated by others. In other words, official marks prevent the use and registration of symbols that so nearly resembles them to be mistaken for the official mark in association with all possible products and services. This applies even if a third party’s activities are entirely unrelated to those of the public authority. For this reason, the official marks regime has often been dubbed the nuclear weapon of Canadian trademarks practice. Prior third party users may continue their existing use, but are blocked from expanding their use beyond the scope that existed at the time the official mark was registered, and ever obtaining registration.
This is a significant benefit to Canadian public authorities and it is certainly in their best interests to apply for such protection. Universities, both Canadian and foreign, can also benefit from the official marks regime. But these marks often cause headaches to Canadian and foreign trademark applicants as the possibilities of arguing around such references are often limited. The official mark holder can consent to registration, and seeking consent is sometimes the only option to overcome an official mark objection. But it can be a challenge to obtain it – especially if the mark is long-forgotten or if the authority no longer exists.
While official marks are the subject of examination prior to being accepted, applicable rules were quite lax for decades. It was only starting in 2007 that stricter rules were applied. Prior to that time, entities had been able to secure official marks even if they were not the subject of “significant government control”. Being a registered charity was historically sufficient to meet the test, when this results in only limited government control. Foreign public authorities were able to secure official marks until 2007. There are several thousand official marks that exist in Canada.
Moreover, and this is also true today, no objections are made to the publication of official marks on the basis of prior trademark registrations or applications, clearly descriptive words are not rejected and there only modest use of the official mark is sufficient to obtain protection. There is no administrative process for a third party to challenge an official mark, for example by filing an opposition. Moreover, protection granted to official marks is perpetual – there is no need to renew them or periodically pay fees. Nor can they be expunged for non-use. Some marks stand in the name of entities that have long been dissolved.
The 2019 amendments to the Canadian Trademarks Act create a new possibility to challenge official marks on the basis of two grounds. The first ground is that the entity is “not a public authority” in light of the new stricter standards, and the second ground is that the entity no longer exists. There are likely a significant number of existing official marks that fall in those two categories.
These new provisions will soon be coming into force, likely in 2023. In anticipation of this, the Canadian Intellectual Property Office (CIPO) published a draft practice notice setting out the administrative process to challenge an official mark. A copy can be obtained here : https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr05084.html. Comments from interested parties are accepted until August 29, 2022. They may be made by email to Ms. Iyana Goyette, the Deputy Director, Policy and Legislation of the Trademarks and Industrial Designs Branch at : email@example.com
How will it work?
The draft practice notice contemplates that the process begins by the submission of evidence and written representations by a party alleging that the holder of the official mark is not under significant control by a Canadian government or that it no longer exists. There is no requirement that the party demonstrate that it is an interested party. Anyone will be able to file these requests.
The proposal is that such requests may only be filed after the first anniversary of the publication of an official mark.
If CIPO’s initial assessment is that one ground or the other is met it will then send notice to the holder of the official mark giving it three months to prove that it is a public authority or that it exists.
It is proposed that this will be an ex parte proceeding.
In other words, the requesting party would not be given any opportunity to review and comment the submissions made by the public authority nor to cross-examine any individuals providing evidence. The requesting party will, however, be made aware of the final decision made by CIPO. A failure to respond will result in the invalidation of the official mark.
If the official mark is invalidated as a result of this proceeding CIPO proposes that it will, of its own initiative, automatically send notices with respect to all other official marks held by the same entity.
The ex parte nature of the proceeding will make it impossible for the requesting party to challenge the arguments or evidence made by the holder. Some aspects of government control will likely be difficult to ascertain at a very early stage and will only become clear when the holder actually files its evidence. This places the requesting party at a significant disadvantage as it will not have the opportunity to comment upon or challenge facts that are normally hidden from public view.
If you are concerned about the proposed administrative process, now is the time to make your voice heard!