Public notice of NETFILE official mark valid, rules court

In FileNET Corp v Canada (Registrar of Trademarks), the Federal Court of Canada has refused FileNET's application for judicial review of the trademark registrar's decision to give public notice of the government's use of NETFILE as an official mark. The court held that the registrar has no discretion to refuse to give public notice if, as here, all the criteria set out in Section 9 of the Canadian Trademarks Act are met.

FileNET is the licensee of the trademark FILENET, which was registered in 1989 for use in association with, among other things, computer hardware, software and peripherals. In 1999 the trademark registrar issued a public notice under Section 9(1)(n)(iii) of the Trademarks Act stating that the government had adopted and was using NETFILE as an official mark for tax filing services. Official marks are not covered by the same rules as ordinary trademarks and can only be used by public authorities. They do not need to be distinctive and are perpetual in nature.

FileNET sought judicial review of the registrar's decision to issue the public notice. It argued that the public notice was invalid and unlawful since, although the mark was placed on a website prior to the date of public notice, the government's tax filing services were not and could not have been provided by that date. Therefore, argued FileNET, the government was not 'using' the mark as required by Section 9.

The court of first instance dismissed FileNET's application, holding that advertising the proposed adoption and use of the NETFILE mark on the Canada Customs and Revenue (CCRA) website was sufficient use to allow the registrar to issue a public notice. FileNET appealed to the Federal Court.

The appeal was dismissed. The Federal Court held that the registrar had not acted unlawfully in giving public notice of the use of NETFILE. The court stated that:

"the registrar has no discretion to refuse a request under Section 9 to give public notice of the adoption and use of an official mark, once a party making the request establishes that the statutory criteria have been met. [...] One of the statutory criteria is that a request for a public notice of a Section 9 must be made by [the government], a university or a public authority [...]. Another is that the party making the request must adopt and use the official mark."

It concluded that advertising the mark on the CCRA website was sufficient use for the purposes of Section 9, even though the government was not in a position to provide the related tax filing services at that time.

Toni Ashton, Sim Hughes Ashton & McKay, Toronto