"No person shall adopt 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 ... (n) any badge, crest, emblem or mark adopted and used by any public authority, in Canada as an official mark for wares or 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."
§9(1)(n)(iii), Trade-marks Act, Canada
I had to rub my eyes the first time I saw this. It was 1987. I had been a practicing lawyer for three years and had never come across anything even remotely similar.
As new general counsel for the Standards Council of Canada, I was verifying the status of the trade-marks SCC and NSC (the latter for National Standard of Canada).
And then, there it was, in all it's glory: section 9(1)(n) of the national trade-marks act (see extract above).
I knew about section 9 generally as it prohibits trade-marks that suggest an affiliation with the Queen or Government or use of the Canadian flag, or any scandalous, obscene or immoral word or device, and the like. These types of prohibitions are typical in trade-mark statutes the world over.
But §9(1)(n) was more - much more. It allows a public authority to grab any existing trade-mark, and use it in spite of confusion with an existing trade-mark ... and block out any future users; a total occupation of the field
In order to be entitled to this intellectual property perk, the institution claiming the mark must be a public authority in Canada.
A public authority has been defined as an agency subject to government control within Canada and whose activities benefit the public. A wide definition, wide enough to attract the notice of a whole host of non-profits and charities.
The SCC was, and still is, a federal Crown corporation so we were clearly a public authority.
But according to the statute, we merely had to give notice to the Registrar of Trade-marks to get the mark; the Registrar, in turn, giving public notice of the "section 9 marks".
The kicker: the trade-mark gives extensive protection to the holders of official marks, including substantial advantages over the rights accorded to owners of ordinary trade‑marks.
And, an official mark need not serve to distinguish wares or services: it may be merely descriptive.
Finally, it will be accepted even if confusing with the mark of another.
The public policy to be served by such a draconian trade-mark power was explained by the federal Court in Techniquip:
"... the intent of section 9 is to remove all the kinds of marks as listed above from the field of trade or business. It is to preclude any person from capitalizing on any well known, respected public symbol and adopting it for his or her own wares or services. These emblems badges or crests are associated with public institutions, not involved in trade or business, but which nevertheless are deemed to be invested with respectability, credibility and other civil virtues. Section 9, in a sense, ensures that these symbols do not become pawns of trade or proprietorship"
Added Justice Heneghan at ¶71 of Sullivan Entertainment:
"Official marks are unique within the context of the Act.
"Unlike commercial trade-marks, official marks are not examined by the Registrar's Office and there is no need for them to be distinctive.
"There is no provision in the Act for any party to oppose their notification.
"They are perpetual and there are no maintenance fees."
The importance of public notice by the Registrar of section 9 marks is that, from that date, other persons are prevented from using any mark that is likely to be mistaken for the official mark except in connection with goods or services with which the mark was used before public notice was given of the official mark.
Section 9 is silent as to what, if any remedies, might be available to an entity aggrieved by such a bully registration of a trade-mark. But in Ontario Association of Architects, the court noted two avenues for redress; judicial review or appeal to the Federal Court.
The Canadian Olympic Association is a §9(1)(n) frequent flyer. They've monopolized Winter Olympic Games™, Summer Olympic Games™ and Vancouver Canada 2010™, while the Canadian Hockey Association has taken Team Canada Hockey™.
The Canadian Parliament has granted additional powers to the Olympic organizers by a new statute, the Olympic and Paralympic Marks Act, which gives blanket prohibition to any "mark that so nearly resembles an Olympic or Paralympic mark as to be likely to be mistaken for it".
Canada Post has §9(1)(n)-ed Canada Post™ and the Salvation Army: God Knows, You Can Make A Difference™.
Some applicants raise serious doubts of the scope of this extraordinary power. For example, in 1997, the University of Toronto usurped, pursuant to §9(1)(n), Ontario Legal Directory™.
Get this: the mark Case Law™ belongs to the Canadian Centre for Occupational Health and Safety in Hamilton, pursuant to §9(1)(n). Justice™ belongs to the Government of Quebec (since 1991).
Alleging that the applicant for a super trade-mark is not a public authority is often thought as the most likely grounds of opposition, However, think again: the list of organizations that have claimed public authority status and that have registered §9(1)(n) marks in Canada include The Alzheimer's Society of Canada, the Heart and Stroke Foundation of Canada, the Canadian Cancer Society and the Canadian Canoe Museum.
These handy super-power belonging only to public authorities is not going anywhere soon in spite of protests from the business community from time to time, especially when Canada hosts the Olympics and the press reports on some small business which uses the word "Olympic" or "2010" and who receives a cease and desist notice from the Olympic games organizing committee or the Canadian Olympic Association.
As was noted by the Court in Mihaljevic v. British Columbia, once public notice has been given under §9(1)(n), the mark is "hardy and virtually unexpungeable".
REFERENCES:
- Canada Post Corp. v. United States Postal Service, 2005 FC 1630
- Duhaime, Lloyd, Intellectual Property Law
- Duhaime, Lloyd, Legal Definition of Trade-Mark
- Duhaime, Lloyd, Trade-Mark Law
- Mihaljevic v British Columbia 22 FTR 59 (1988)
- Olympic and Paralympic Marks Act, Statutes of Canada 2007, Chapter 25.
- Ontario Assn. of Architects v Assn. of Architectural Technologists of Ontario, 2002 FCA 218
- Sullivan Entertainment v Ann of Green Gables Licensing Authority Inc. 2002 FCT 1321
- Techniquip Ltd. v. Canadian Olympic Association 80 CPR 3d 225 (1998, FCTD)
- Trade-Marks Act, Revised Statutes of Canada 1985, Chapter T-13