Overview
The 2018 amendments to the Canadian Trademarks Act (the “Act”) relating to official marks are expected to come into force in the near future. The Canadian Intellectual Property Office (CIPO) published a draft practice notice outlining their proposal to simplify the process for challenging official marks. These changes are expected to impact Canadian official mark holders, specifically not-for-profit entities.
Official marks fall within a special category of trademarks that are administered by the Trademarks Office and can only be obtained by those who qualify as a “public authority” under the Act. They are not subject to summary cancellation (section 45) proceedings or to renewals and can cover all classes of goods and services. This protection prevents the appropriation, use, and registration by others of marks that resemble the registered official mark.
The two-part test for determining whether an entity qualifies as a “public authority” was developed by the Federal Court of Canada in the case of Ontario Association of Architects v Association of Architectural Technologists of Ontario (C.A.), 2002 FCA 218, and requires the following elements: (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.
The current process for challenging a registered official mark is to seek action through the Federal Court by judicial review, or by seeking a declaration that the official mark is invalid. An official mark can be found to be invalid if the owner does not qualify as a “public authority” or if the official mark was not “adopted or used” prior to obtaining official marks status.
The Proposal
The proposal, outlined in the new subsections 9(3) and 9(4) of the Act, is as follows:
- 9(3) For greater certainty, and despite any public notice of adoption and use given by the Registrar under paragraph (1)(n), subparagraph (1)(n)(iii) does not apply with respect to a badge, crest, emblem or mark if the entity that made the request for the public notice is not a public authority or no longer exists.
- (4) In the circumstances set out in subsection 9(3), the Registrar may, on his or her own initiative or at the request of a person who pays a prescribed fee, give public notice that subparagraph (1)(n)(iii) does not apply to the badge, crest, emblem or mark.
The process begins with any third party, not only those that are interested parties, submitting evidence and written representations to the Registrar of Trademarks that an official mark holder is not a “public authority” or that the holder no longer exists. If one of the above situations applies, the Trademarks Office will send a notice to the holder stating that they have three months to present evidence that proves otherwise. Should the holder fail to respond or produce sufficient evidence, the official mark will be invalidated.
It is worth noting that such a request by a third party can only be made following the first anniversary of the publication of the official mark. Further, it is currently proposed to be an ex parte proceeding, where the requesting third party will only be made aware of CIPO’s final decision and will not be able to participate in the process while it is ongoing.
Impacts to Not-for-Profits
While not-for-profit entities were able to obtain official marks in the past, this changed when the Federal Court developed the stricter two-part test described above. Following the adoption of the two-part test, not-for-profit entities with registered official marks were no longer “public authorities” as they did not have a significant degree of governmental control. However, given the current process for official mark invalidation, many of the official marks owned by these entities have remained on the Register. Further, official marks owned by inactive entities have also remained on the Register given that there is no requirement to renew or maintain official marks.
Following the amendments, trademark applicants will be provided with a more efficient means of removing invalid official marks that are impeding their applications from the Register. Active not-for-profit entities’ official marks are at risk of being invalidated.
Conclusion
Not-for-profit entities who own official marks should review their options to maintain their intellectual property protection. One option includes applying for a regular trademark application for the official mark. This may lessen the entity’s risk of losing their protection altogether once the new amendments come into force.
This article is provided for informational purposes only and is not legal advice. For further information, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.