Public agency allowed to use trademark identical to official mark

Canada

In Royal Roads University v Her Majesty the Queen, the Federal Court of Canada has dismissed the plaintiff's action for summary judgment in relation to its claim that the defendant, a government agency, had infringed its official mark in contravention of Section 9 of the Canadian Trademarks Act. The court held that the defendant began using the mark before the notice of the plaintiff's adoption of its official mark had been issued.

Section 9 of the Canadian Trademarks Act deals with prohibited marks. It precludes the adoption of any mark consisting of (or closely resembling) a mark of a public authority, a university or Her Majesty's armed forces once the registrar of trademarks has given public notice of the mark's adoption and use. The registrar does not examine marks filed under Section 9 for potential confusion with earlier rights or for descriptiveness prior to giving public notice in the Canadian Trademarks Journal. Once such notice is published, it trumps any subsequent adoption of or application for an identical mark, regardless of the goods or services involved. The owner of a mark protected by Section 9 cannot, however, stop use of an identical mark if the use commenced prior to the date of the notice.

In the case at hand, the parties, both of which are public agencies, were competing for the same slogan. Royal Roads University adopted and used the slogan 'You can get there from here' in its 1999 advertising campaign for educational services. The defendant, a government agency managing savings and investment products, used the same slogan in promoting Canadian bonds during its 2001 to 2002 and 2002 to 2003 advertising campaigns. On May 29 2002 a public notice was issued under Section 9 stating that Royal Roads had adopted and was using the slogan in question.

A few months later, Royal Roads sent the defendant a cease and desist letter, and subsequently brought a summary judgment motion to enjoin the defendant from using the mark. A creative argument was raised in an effort to circumvent the defendant's use of the mark prior to the date of public notice. Royal Roads noted that each year the defendant markets a new series of bonds with different rates of return and identification numbers. It argued that each series constituted a new product. On this basis, it contended that the defendant's advertisements featuring the slogan 'You can get there from here' that ran after May 29 2002 to promote its bonds for the following year represented a new and thereby infringing use.

The Federal Court rejected this argument and dismissed the plaintiff's application for summary judgment. It held that the bonds were essentially similar from year to year and did not become new and different products when the interest rates changed. In so doing, the court likened the defendant's position to that of Royal Roads, which used the mark to promote a variety of courses that had the potential to change annually or more often.

This case illustrates the unique issues that arise in the context of Section 9, particularly when both parties are public agencies. The judge recognized the unusual nature of the situation, suggesting in obiter that such cases are perhaps best resolved not from a legal standpoint, but through negotiations weighing the importance of the mark to each party's overall success.

For further discussion of the implications of Section 9, see Public notice of NETFILE official mark valid, rules court and Summary judgment refused, as Anne of Green Gables dispute rolls on.

Oksana Osadchuk, Gowling Lafleur Henderson LLP, Ottawa

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