Pending amendments to Canada’s Trademarks Act that restricts the current official mark scheme may provide another strategy for applicants who wish to register marks that may be confusing with an official mark.

Currently, in Canada the rights and protections of official marks are enumerated in section 9(1)(n)(iii) of the Trademarks Act as follows:

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 and services, in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use.

In short, if the Registrar of Trademarks (the “Registrar”) gives public notice of adoption and use of an official mark by a public authority, no other person can use or adopt that mark or anything that nearly resembles that mark. This exclusion extends across all goods and services, unlike an ordinary trademark registration, which only applies to the goods and services specified in the registration. This broad protection is beneficial to owners of official marks, but may be detrimental not only to persons later applying to register a trademark that might be considered to resemble the official mark, but also to persons who own registrations covering similar trademarks prior to the granting of an official mark.

In the former case, it is evident that the presence of an official mark can make it difficult for any other party to register a similar mark in the future. In the latter case, the owner continues to hold the registration as granted but is likely unable to file further applications to broaden the goods and services covered by the registration. That is, even if a registration for a similar mark is granted prior to advertisement of an official mark (i.e. the registration precedes the official mark), the owner may be prevented from registering any expanded use of their mark.

The broad protection given to official marks therefore makes it difficult to register similar marks. This being said, there are a number of strategies available to an applicant if the Registrar cites an official mark against their application due to similarity between the marks, including:

1. requesting consent from the official mark owner to use and register the applied-for mark;
2. filing arguments to distinguish the applied-for mark from the cited official mark; and
3. commencing a Federal Court action, arguing that the official mark holder does not have the authority to hold an official mark.

Pending amendments to the Trademarks Act may provide applicants with another strategy when faced with the citation of a similar official mark. The pending amendments stem from section 215 of Bill C-86. Once Bill C-86 comes into force, it will add new sections 9(3) and 9(4) to the Trademarks Act. New section 9(3) would provide that the protection awarded to official marks under section 9(1)(n)(iii) of the Trademarks Act is not applicable if the entity that requested the publication of the official mark no longer exists. New section 9(4) would provide that if the conditions of new section 9(3) are satisfied (i.e. the entity requesting publication no longer exists) the Registrar may, on his own or upon request, give public notice that the protection under section 9(1)(n)(iii) no longer applies for the official mark.

Once the amendments are in force, applicants faced with a situation where the Registrar has cited an official mark due to similarity may wish to determine whether the entity that requested publication of the official mark currently exists. If the entity does not exist, the applicant may wish to invoke section 9(3) as a strategy to overcome the objection, arguing that protection pursuant to section 9(1)(n)(iii) no longer applies. The applicant may also wish to file a request pursuant to section 9(4) asking the Registrar to give public notice that protection under section 9(1)(iii) no longer applies for the cited official mark.

Unfortunately, while Bill C-86 has received royal assent, the amendments that introduce sections 9(3) and 9(4) remain pending. As such, these additional strategies are not yet available, making official marks substantial roadblocks for other traders wishing to use similar marks.