CIPO issues new requirements for official trademark protection

The Canadian Intellectual Property Office (CIPO) has issued a practice notice providing guidance on its new practice on public authority status under Sub-paragraph 9(1)(n)(iii) of the Trademarks Act and the requirements for official mark protection.

The act, in addition to permitting the registration of trademarks, provides registration-like rights to 'official marks' that are adopted and used by a public authority. In contrast to the standard application process for a trademark, an official mark:

• cannot be the subject of an opposition;
  
  
• can be rejected by the Trademarks Office only on very limited grounds; and
  
  
• need not be limited to particular goods or services.

If an entity qualifies as a public authority, it is therefore often advantageous for the entity to protect its marks as official marks (in addition to or in lieu of registration). As a result of several recent court decisions (specifically, Ontario Association of Architects v Association of Architectural Technologists of Ontario, Canada Post Corporation v United States Postal Service and See You In - Canadian Athletes Fund Corporation v Canadian Olympic Committee), CIPO has revisited the requirements to qualify for official mark protection.

Sub-paragraph 9(1)(n)(iii) of the act prohibits any person from adopting:

"in connection with a business, as a trademark 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 wares or services, in respect of which the registrar [of trademarks] has, at the request of the… public authority…, given public notice of its adoption and use."

The practice notice restates CIPO's previous adherence to the two-part test set out by the Federal Court of Appeal in Ontario Association of Architects, namely:

• A significant degree of control must be exercised by the appropriate government over the activities of the body; and
  
  
• The activities of the body must benefit the public.

As a result of the decision of the Federal Court in Canada Post Corporation, the 'public authority' must be a public authority in Canada (see "Federal Court delivers blow to foreign-owned official marks", "Official marks open only to Canadian entities" and "Supreme Court confirms official marks ruling").

CIPO now requires that, in order to satisfy the first element of the two-part public authority test, an entity be subject to governmental control within Canada and the government exercising the control must be Canadian. The test of governmental control calls for ongoing government supervision of the activities of the body claiming to be a public authority.

An important change to the CIPO practice with regard to official marks concerns the evidence of adoption and use. Previously, CIPO required no evidence that the entity requesting public notice of its adoption and use of an official mark had actually used the official mark in Canada. However, as a result of the Federal Court decision in See You In, CIPO now requires evidence of adoption and use of an official mark.

However, the act does not define 'adoption' or 'use' with regard to official marks. Court decisions have held that a common element of both adoption and use is that there is an element of public display. Accordingly, internal use of a mark is not considered adoption and use of the mark. In addition, CIPO has made it clear that adoption and use of an official mark by a licensee will not be considered adoption and use by the public authority.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto