If you are a Canadian or registering your trademark in Canada, you probably heard about Canada’s Official Marks. Official marks are essentially a type of trademark that is protected for all goods and services. Unlike regular trademarks, this type of marks does not expire and does not have to be renewed. Neither can you file non-use cancellation against them even if they are not in use.  Certain public authorities and government bodies are allowed by the Section 9 of the Canadian Trademarks Act to have special protection for their trademark registrations. We call them “Superpowers”.

Let’s learn about Official Marks and who is eligible to apply for one

‘Official Marks’ are a unique category of trademarks which are owned by Canadian public authorities. Canadian Trademarks Act defined public authorities as the entities that are substantially controlled by a Canadian govt. body and that are engaged in the endeavor of focusing on the public interest. Therefore, the govt. and non-government entities which are controlled by Canadian government entity(ies) to a significant degree can own an Official Mark. These entities are called public authorities. In addition, the colleges and universities including both Canadian and non-Canadian, are also allowed to own an ‘Official Mark’.

Take for an example, the word mark STORYWORKS (Application No. 923423) which is owned by the Centennial College of Applied Arts and Technology or the design marks PARK DESIGN (Application No. 0908246) and O & Design (Application No. 924635) that are owned by the Ontario Ministry Of Natural Resources and The City of Ottawa, respectively.  Another example is DAYBREAK (Application No. 910388) which is a word mark and owned by L’arche Daybreak, a nongovernment organization involved in the community services.

Official marks may only be filed in Canada if they are already in use prior to filing.

How ‘Official Marks’ are more protected than regular trademarks

Canada’s official marks Official marks provide several outstanding rights to their owners, such as:

1) An ‘official mark’ does not need to be filed for a specific class; it covers all classes covering all goods and services.

2) Official marks last for a lifetime. Once filed, they do not expire and thus do not require a renewal, furthermore, they cannot be expunged or cancelled for non-use.

3) Applications for the official marks are not examined to determine their registrability or confusion with an existing trademark.

4) Official marks are registered much faster (usuall within 6 months), since they are only examined on formal grounds.

5) Descriptive marks, usually unregistrable, are also registerable as an official mark.

6) The termination of the official marks can be done only by the voluntary withdrawal by their owners.

7) Official marks cannot be opposed by third parties.

Can a public authority register an official mark if there is already a similar registered trademark?

Canada’s official marks that are identical or confusingly similar to your registered trademarks are registerable. A newly registered mark will co-exist with the existing ones but may restrict any new applications for extended goods and services from the prior registrants. A positive aspect of this phenomenon is that the newly filed official mark will also act to block any new filings submitted by your opponent. While the unregistered trademarks that are in use before the publication of an official mark can continue using the mark but will not be qualified for registration.

What to do in case your application is blocked by an official mark?

It is going to be an absolute block to your trademark application if the Trademarks Office finds an official mark identical to yours. It does not matter whether you are seeking registration for completely different goods or services, and distinct industry than the existing official mark.

Is it possible to overcome official mark-based refusals?

It is not possible to register an identical or similar mark to an official mark without the consent of its owner. However, if you own a trademark identical to an official mark, you may adopt any of the following strategies:

  1. Submitting an argument with supporting documents if there is any ground to prove that the trademark is not identical to the cited official mark. The Canadian Trademark Office has now made it obligatory for the Examiners to cite the similar, if not identical, official marks. Therefore, it created a chance for the applicant to submit an argument stating that the trademarks are not identical. Take, for example, your trademark may have some extra elements (either literal or design), in that case you may argue that your trademark is distinguishable and persuade the examining officer to withdraw the refusal.

 

  1. Another strategy could be obtaining official consent from the owner of the official mark. It depends, however, on the willingness of the owner of the official mark as they are not obliged to give you consent. There could be several scenarios such as one may give you unconditional consent or without asking for monetary compensation, while others may demand monetary compensation or provide a set of conditions. Of course, the third scenario could be a direct rejection of your request without giving any further explanation.

 

  1. Taking legal action through the Federal Court arguing that the owner of the official mark does not possess the right to own the official mark. For example, submitting an argument that the owner of the official mark is not under a significant degree of control of the Canadian govt. (which is an obligatory condition to own an official mark). In recent times, the Federal Court of Canada has issued decisions concerning the validity of the ownership of several official marks. These decisions invalidated the official marks on the ground that the owners did not fall under the definition of public authority according to the Trademarks Act.

 

For example, in Starbucks (HK) Ltd. and Trinity Television Inc. case of 2016, the broadcasting company, ‘Starbucks’ filed a lawsuit challenging the validity of the owner of the official mark ‘NOWTV’ in 2016, when the Canadian Trademark Office rejected its trademark application for ‘NOW TV & Design’. Finally, the official mark was invalidated by Canada’s Federal court based on the Canadian Trademark Act which suggests that the official mark owner did not constitute a “public authority”. Although filing such federal court action is costly, the consequence could be better than anything else.

 

  1. An indirect approach to persuade the official mark owner for its consent. As we already know, the official mark could be owned by either government agencies or non-government agencies that are significantly controlled by the Canadian government. If the official mark that’s impeding your trademark application is owned by a non-government organization, then you may contact the government agency that is patronizing the official mark owner and request an attempt to persuade the official mark owner for a consent. However, the successful persuasion of consent is not guaranteed.

 

  1. An alternative strategy could be a fresh filing (re-filing) for the trademark using some additional elements (either literal or design). This approach is especially recommended if your trademark is completely identical to the cited official mark, and does not have scope to submit an argument to prove that it is distinguishable from the official mark. However, if there is any additional unique element in your mark then you may try to persuade the examiner to withdraw the refusal by submitting an argument.

 

To avoid getting a refusal based on the existence of an official mark, the most prudent approach would be to do a full clearance search prior to filing. A comprehensive trademark search will uncover any identical and similar marks that may present an obstacle to registration of your mark.

Conclusion:

The latest changes (July 2019) of Canadian trademark law did not affect the rules regarding the Canada’s official marks (Section 9 of the Trademarks Act). Therefore, to make sure your trademark does not run into an official mark, it is recommended to consult with a trademark professional before you file your trademark. She/he will help you develop the strategy for a successful registration. A well-planned strategy could help you to avoid any potential block by an existing official mark.