Inquiry into adoption and use of official marks should be made

In the context of a recent judicial review proceeding, the Federal Court of Canada has suggested that the registrar of trademarks should conduct an inquiry into whether official marks had been adopted and used prior to publication of the notices in the Trademarks Journal.

The applicant, See You In - Canadian Athletes Fund Corporation (SYI Fund), raises money to support Canadian athletes in international competitions. It filed trademark applications for several trademarks including SEE YOU IN TORINO, SEE YOU IN BEIJING and SEE YOU IN VANCOUVER.

While these applications were pending, the respondent, the Canadian Olympic Committee (COC), requested that public notice under Section 9 of the Trademarks Act be given for the same three marks. In support of its request for publication, COC filed substantive evidence that it was a public authority. However, no evidence was filed with respect to its claim that the marks had been adopted and used in Canada. Rather, there was a letter from COC's counsel stating that the respective marks had been adopted and used in Canada.

The registrar gave public notice in the Trademarks Journal of the adoption and use of the official marks. SYI Fund sought a judicial review of the registrar's decision to publish the notice of the official marks. Primarily, SYI Fund sought to raise the issue of whether COC had adopted and used the official marks prior to publication.

The evidence filed by COC indicated that its employees and consultants used the marks verbally in correspondence, emails and memoranda, and that the marks were used on promotional items such as pens and flashlights. The evidence included an invoice for the pens and flashlights. It appeared that the order for the pens and flashlights was placed two days before the requests for publication were made, but that the order was received shortly after the publication of the notices. On the instructions of counsel, COC's witness refused to produce any other evidence.

The court noted that it is the practice of the registrar to inquire into whether the requesting party is a public authority and typically to accept unsworn, unsubstantiated statements regarding adoption and use of the marks at issue. However, as the effect of the publication by the registrar of official marks is to preclude registration of trademarks, the court stated that the issue of adoption and use deserved some inquiry and a better level of diligence.

The court held that it was not unreasonable for the registrar to reach the conclusion that COC was a public authority based on the evidence filed and the substantial case law which has recognized COC's status. However, the court found that the registrar's decision to publish the official marks was neither correct nor reasonable. In the present instance, there was no evidence of adoption and use. The internal use and use on promotional items did not involve any element of public display prior to the date of publication.

Accordingly, the judicial review was granted. The registrar's decision to publish the official marks was quashed and the public notice of the official marks was of no force and effect.

This decision is of interest as it suggests that the registrar should not merely accept unsworn statements that official marks have been adopted and used in Canada as has been the prior practice, but rather that the registrar should conduct an inquiry on this issue as is presently conducted regarding the determination of public authority status.

Samantha J Gervais, Osler Hoskin & Harcourt LLP, Ottawa