Over 700 prohibited marks were filed in Canada in 2016 under section 9 of the Trade-marks Act. Section 9 prohibits the adoption “in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for” the fairly broad subject matter enumerated in section 9. One category of prohibited marks is “official marks” under paragraph 9(1)(n). Under this paragraph, a badge, crest, emblem, or mark is not prohibited unless the Trademarks 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.”
Official marks are a unique construct of Canadian trademark law. The official mark application process is a simplified version of the regular trademark application process. Applicants seeking public notice under paragraph 9(1)(n) must quality as any of “Her Majesty’s Forces as defined in the National Defence Act”, a “university”, or a “public authority” and provide evidence of adoption and use of the official mark. Marks that have been adopted and used in Canada as official marks 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. 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. Once public notice has been given an official mark is virtually inexpungable. However, the prohibition only applies to uses adopted after notice was given of the adoption of the official mark.
A complete listing of the 724 prohibited mark applications can be obtained via the Canadian Intellectual Property Office’s trademark database. The top five official mark filers in 2016 include: Translink (49 filings); European Union Intellectual Property Office (30 filings); Western Canada Lottery Corporation (28 filings); European Council (26 filings); and Council of the European Union (24 filings