Published April 21st, 2016

Trade-mark legislation around the world varies. The Canadian Trade-marks Act is no exception. In fact, a unique provision is found under Section 9 of the Canadian Act. The majority of this Section is quite benign and among other things reveals Canada’s membership in the Commonwealth, for example, by including prohibitions against the registration of a trade-mark that consists of, or so nearly resembles as to be likely to be mistaken for, the Royal Arms, Crest or Standard; the arms, crest of any member of the Royal Family; the emblem of the Red Cross on a white background; scandalous, obscene or immoral words or devices and so forth.

The real danger relies in Section 9(1)(n)(iii) which states that no person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, any badge, crest, emblem or mark adopted and used by any public authority, in Canada as an official mark for goods or services in respect of which the registrar has given public notice of such adoption and use.

The effect of this provision can be profound and therefore is the reason why Section 9 has been much maligned. Not only does this Section 9(1)(n)(iii) allow Canadian public authorities to adopt and use what is known as an “official mark” – even if a confusingly similar mark already exists – the official mark can cover all goods and services, is immune to opposition, cannot be expunged and is not subject to renewal.   Only judicial review can remove the mark.

Official Marks therefore are a headache for trade-mark practitioners and trade-mark owners in Canada. However, recent developments may indicate that this could change.

In June 2014, a Private Member’s Bill (Bill C-611) titled, “An Act to amend the Trade-marks Act (public authority)”, was sponsored by Geoff Regan, a Liberal Member of Parliament for Halifax West. The Bill sought to amend Section 9 of the Act to, among other things, include a definition of “public authority”, subject official marks to a 10 year renewal period, and permit an objection process.

The Bill died after its first reading in June 2014 by the House of Commons (under the then majority Conservative government), which is fairly common for private member’s bills. The Bill has not yet been reintroduced to Parliament. However, following the October 2015 election, Geoff Regan was re-elected as a Liberal Member of Parliament in the now majority Liberal government. Although Geoff Regan was recently appointed as Speaker of the House of Commons, there may still be hope that the Bill will be revived or incorporated into a government bill.

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