Canada celebrated the 150th anniversary of its Confederation on July 1, 2017 and at the heart of the Sesquicentennial Anniversary is the design of an official logo. Because care must be taken in using the official Canada 150 Logo, this article is intended to serve as a helpful guidepost for businesses navigating the usage process.
The Look and Feel of the Canada 150 Official Mark
The winning design for the official Canada 150 Logo was chosen as part of a nationwide competition that took place over the course of 2014-2015. Recognizing the distinctive design elements of the official logo is integral to its use.
The Canada 150 Logo is composed of a series of diamonds or “celebratory gems,” which are arranged in the shape of the iconic maple leaf. The four diamonds at the base of the leaf represent the original provinces that formed Confederation in 1867: Ontario, Québec, New Brunswick, and Nova Scotia. Diamonds extend from the base to create the leaf’s nine points, representing in total the 13 Canadian provinces and territories.
In conjunction with the image, a typeface that supports Canada’s two official languages (English and French), as well as the country’s Aboriginal languages, has also been created.
What Is An Official Mark?
The Canada 150 Logo is protected as an official mark pursuant to subparagraph 9(1)(n)(iii) of the Canadian Trade-marks Act. Subparagraph 9(1)(n)(iii) provides that no person shall adopt 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 goods or services, in respect of which the Registrar of Trademarks has given a public notice of its adoption and use.
Marks that have been adopted and used in Canada as official marks by a public authority cannot be adopted by any other person once public notice is given by the Registrar of Trademarks. Official marks are granted extraordinary protection, often described as broader than the rights afforded to regular trademarks, in that the owner of an official mark obtains exclusivity for all goods and services. In contrast, the rights afforded to the owner of a regular trademark are tied to specific goods and services.
Official marks provide other significant advantages to entities that qualify as a public authority and register a trademark as an official mark. The application process is a simplified version of the regular trademark application process. Applicants seeking public notice under subparagraph 9(1)(n)(iii) must qualify as a “public authority” and produce evidence of adoption and use of the official mark. The requirements typically imposed to ensure that a trademark is registrable and that the applicant is the person entitled to secure its registration do not apply to official marks.
The two-part test for whether an entity is a “public authority” was set out in Canada (Registrar of Trade-marks) v Canadian Olympic Association, (1982), 67 CPR (2d) 59 (FCA). The two factors that must be examined include:
- whether the body is subject to a significant degree of governmental control; and
- whether the body must be required to dedicate any profit earned for the benefit of the public and not for private benefit.
Government control calls for some ongoing government supervision of the activities of the body by a Canadian government directly or through its nominees; public duty means something that is to the public benefit. In determining whether the activities of the entity benefit the public, the Registrar of Trademarks will also consider the entity’s mission, duties, and power.
Once the requirements are met, the Trademarks Registrar has limited discretion to refuse an application. The official mark is published in the Canadian Trade-marks Journal and automatically becomes a prohibited mark under section 9 of the Trade-marks Act, in that it cannot be adopted by others in connection with a business, whether as a trademark or otherwise.
An official mark need not serve to distinguish goods or services, it may be merely descriptive, and it may be confusing with another’s mark, one public notice has been given an official mark is virtually unexpungeable. However, the prohibition applies only to uses adopted after notice was given of the adoption of the mark by the public authority. Parties having prior use, or claiming under those having prior use, may continue to use, but only with those goods or services for which prior use can be established and not with others.
Notwithstanding the prohibition, the Trade-marks Act provides that consent may be given by the public authority to the adoption, use, or registration as a trademark or otherwise, of any mark intended to be protected by section 9.
Other Canadian symbols, the use of which is prohibited under section 9(1) of the Trade-marks Act include the Canadian flag and the 11-point maple leaf. However, under section 9(2) of the Trade-marks Act, use of the flag and leaf are permissible on souvenirs, publications, and generally in a manner conforming to good taste provided it is without any attempt at proprietorship or to mislead the public as to a connection between the user and the Government of Canada.
Conclusion
Official marks are a unique aspect of Canadian trademark law and pose interesting challenges for trademark owners and users.