Public authority status needed for official marks

The Canadian Trademarks Office has released a practice notice requiring applicants for official marks to provide evidence of public authority status. Official marks give the owner very powerful rights and remedies that are similar to registered trademarks.

The practice notice adopts the reasoning in Ontario Association of Architects v Association of Architectural Technologists of Ontario, in which the Federal Court of Appeal held that the test for 'public authority' has two prongs: (i) whether the organization is under a significant degree of government control, and (ii) whether the activities of the body are for public benefit.

The change brought about by the practice notice narrows the number of organizations that qualify as public authorities. Simply being a creature of statute is no longer enough to show a significant degree of control by the government.

"The test of governmental control requires that the government be enabled, directly or through its nominees, to exercise a degree of ongoing influence in the body's governance and decision-making."

As to public benefit:

"[I]t is relevant to consider [the body's] objects, duties and powers, including the distribution of its assets. In this context, a duty to do something that is of benefit to the public is relevant as an element of 'public benefit', even though it is not a 'public duty' in the sense of being legally enforceable by a public law remedy [...]."

Toni Ashton, Sim Hughes Ashton & McKay, Toronto