Public Authority Trademarks in Canada – Legislative Reform

On June 9, 2014 Bill C-611 (a private members bill) was put before Parliament with the intention of amending section 9 of the Trademarks Act,which deals with official marks. Section 9, and official mark protection thereunder, is the primary purview of governments and governmental authorities within Canada allowing for streamlined access to broader protection for public authorities and official marks than is available in most circumstances to regular trademark applicants. Currently, official marks are not subject to any opposition proceedings or renewal terms, and do not have to meet many of the typical requirements for trademark registration under the Act. The superior rights which attach to these types of advertisements and official marks have been attractive to those public authorities qualifying for their use in the past, but are somewhat idiosyncratic in Canadian trademark law as well as internationally, for the large majority of parties who cannot use them.

In 2013, the Standing Committee on Industry, Science and Technology recommended that the Government introduce amendments to the portions of the Trademarks Actdealing with official marks so as to “avoid stifling innovation and distorting markets”. Halifax MP Geoff Regan tabled his private member’s bill, the purpose of which “is to clarify what constitutes a public authority under section 9, as well as to create a review and objection process to ensure public marks do not unduly restrict the market”. The specific changes proposed by Bill C-611 are as follows:

  • Added definition of “public authority” – the term is not defined under the current legislation.
  • All public authority marks will be subject to a 10-year term, with the option to renew for a further 10-years, subject to a further opposition period.
  • The Bill’s transitional provisions state that all existing marks as of the coming into force of the amendments would be subject to an opposition period as well as a 10-year term. spike in opposition proceedings as a result.
  • Added objection process– within 3 months of the registrar giving public notice of the adoption and use of a mark by a public authority, any interested person can file an objection on the basis of:
    • lack of use;
    • the body is not actually a public authority;
    • the mark is confusing with a previously registered mark, or is identical or nearly identical to a registered trademark and may significantly undermine the ability of the trademark owner to fully exploit the mark;
    • the mark is a generic term; or
    • the granting of the mark does not serve the public interest.

Section 9 will continue to exist in its current form for the foreseeable future, as it was largely unaffected by the massive overhaul of the Trademarks Act in Bill C-31 earlier this year. However, regardless of the outcome of this particular bill, the text of it provides a catalyst for ongoing discussion around the future and scope of official marks in Canada, both for public authorities enjoying and urging their continued use, and other brand owners and parties in the market who wish to level the playing field by curtailing or eliminating their use.