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Bulletin

Amendments to the Trade-Marks Act : Loophole in the Official Mark Fortress

Fasken
Reading Time 3 minute read

Trade-Mark Bulletin

In preparation of the entry into force of the amendments to the Trade-Marks Act (“TMA”), announced for June 2019, trade-mark owners will rejoice in seeing the addition of a new paragraph to the existing Section 9, which currently establishes the unique «official marks» regime in Canadian trade-mark law. Section 9, paragraph 3 will provide for a simplified proceeding to invalidate official marks from the Canadian Registry of trade-marks.

For those or our readers not accustomed to the «official marks» protected by the TMA, these special marks are granted to public entities, bodies, or authorities under the control of a Canadian government (i.e. federal, provincial, or municipal). These can include any badges, emblems, marks, crests, or signs, belonging for instance to any such public authorities as police forces, departments, ministries, the royal family and the Crown representatives, or other international organizations such as the Red Cross. Universities, whether Canadian or foreign, also benefit from this provision, though they do not need to satisfy any control requirement. We have previously reviewed the issue and potential use of official marks in an earlier publication.

The regime of Section 9 offers to official marks a broad scope of protection. Most notably, no specific goods or services need to be associated with the mark, and the owner is not required to show that the mark is distinctive or not confusing with another mark. After public notice of its adoption and use issued by the Registrar, no other trade-mark that consists or so nearly resemble or is likely to be mistaken for an official mark may be registered.

So, what do the amendments change? As of now, the official marks of an entity, despite no longer existing or qualifying as a public authority, remain in the registry, thus preventing other users to adopt such marks or to apply to expunge them. This will change after the entry into force of the amendments because the new paragraph 3 of Section 9 provides two new ways to curtail the broad scope of protection afforded to official marks:

  • Firstly, a trade-mark user is no longer prohibited from using a sign that consists of, nearly resembles, or is likely to be mistaken for an official trade-mark if the entity which gave public notice of its use and adoption no longer is a public authority or no longer exists; and
  • Secondly, an applicant by request to the Registrar or the Registrar itself on its own initiative can publish a notice of non-application of section 9 if the entity is no longer a public authority or no longer exists. 

The amendments also add Section 11.01 which removes the use of an official mark as a basis for infringement if the owner of said mark no longer exists or lacks qualification as a public authority.

This means that many official marks currently held by non-existing entities or being held under insufficient claims to public authority will become available for others to use and register. This greatly simplifies the expungement of the register, to clear off the «deadwood» in a fashion similar to what is already provided in s 45 TMA for non-use. Previously, only a judicial review could eliminate the registration of an official mark, a rather more complex, uncertain, and costly procedure.

For further information on this and other topics at the International Trademark Association Annual Meeting, please visit our dedicated webpage.