Parallel to its “regular” trademarks system, Canada runs a separate regime for so-called official marks. This regime affords marks adopted and used by universities and public authorities a protection unlike that of any other trademarks. Although very advantageous for eligible entities, this regime can at times be frustrating for both existing and prospective trademarks owners. Here is why you should take advantage of it, if you represent a public authority or a university, and how to deal with an official mark if it is cited against a proposed application for a similar trademark.
The Canadian Trademarks Act provides that no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, any badge, crest, emblem or mark of any university or adopted and used by any public authority, in Canada as an official mark for wares or services, in respect of which the Registrar has given public notice of its adoption and use. A public authority under the Trademarks Act is an entity controlled by a Canadian government. However, there is no such control requirement for universities and foreign universities could very well take advantage of the official marks regime.
The Trademarks Act grants a very broad scope of protection to official marks. First, public authorities and universities are not required to identify goods and services in association with their proposed official mark. Second, they do not need to show that the mark is distinctive or that it is not confusing with a prior trademark. A mark could thus be descriptive, confusing or even identical to an existing trademark and still benefit from official mark protection. From the date public notice of the official mark is given by the Registrar, no other trademark may be registered if it “so nearly resembles as to be likely to be mistaken” for the official mark, even if the goods or services associated with it have nothing to do with the activities of the owner of the official mark. Official marks are perpetual in theory and need not be renewed.
No examination process and no opposition proceedings exist for official marks. Applicants whose trademarks are blocked by official marks thus have to resort to other strategies. The most simple strategy is obtaining the consent of the public authority or university. If such consent is granted, then the Registrar will automatically lift its objection based on the official mark. It is also possible to argue that the trademark does not so nearly resemble the official mark as to be mistaken for it - a test that is slightly different from the usual “likelihood of confusion” test applied in relation to regular trademarks. Finally, applicants sometimes succeed at challenging the public authority status of the owner of the official mark. Because an official mark must have been adopted and used in Canada before public notice is given by the Registrar, it is also sometimes possible to challenge the official mark on the basis that the mark was not adopted and used prior to public notice.
If you or your client are in a position to benefit from this very unique regime, do not hesitate to use it. Official marks give your client an exceptional advantage over ordinary trademarks. If, on the other hand, you are faced with a situation where an official mark is cited against your application or your use of a trademark in Canada, all is not lost. There are ways to circumvent this obstacle, although they are somewhat different from those that apply to ordinary commercial trademarks. Seek advice from a Canadian trademark practitioner to know your options.
For further information on this and other topics at the International Trademark Association Annual Meeting, please visit our dedicated webpage at www.fasken.com/INTA2017.
