The following is a copy of remarks I made in an appearance before the Standing Senate Committee on Banking, Trade and Commerce, on November 21, 2018. The remarks are about proposed amendments to the Trade-marks Act found in the omnibus Bill C-86. I realize that not everyone is as interested in official marks as I am. To get a sense of what the fuss is all about, you can have a look at my posts about the overprotection of Olympic Marks, the dispute over the Spirit Bear mark, the struggle to register a trademark in the face of an wrongly granted and since abandoned official mark, Canada Post’s official marks for POSTAL CODE and CODE POSTAL and a previous private member’s bill to reform official marks.
Canada’s official marks regime has long been criticized by lawyers, academics and the Federal Court. In fact, it is the Federal Court that has, over the years, created some much needed boundaries for these “super marks”. The problems with official marks are well known, but they have largely been ignored by Parliament. It is therefore refreshing to see the proposed changes in ss. 215 and 216 of Bill C-86.
Sections 215 and 216 address only one of the problems with the official marks regime. Although it is an important one, it is worth noting that there is more that could be done. The goal of my remarks will be to identify what I see as two shortfalls of ss 215 and 216.
Official marks are a subcategory of prohibited marks, which may not be adopted, used or registered unless consent is provided. They are available to “public authorities”. A public authority need only ask the Registrar of Trademarks to give public notice of its adoption and use of an official mark for that mark to be protected. There are no limits to what can be adopted. There are no registration formalities, no examination or opposition proceedings. Until the very recent decision of the Federal Court in Quality Program Services Inc. v. Canada, it seemed nothing prevented a public authority from obtaining an official mark that was identical to or confusing with an already registered trademark. While Quality Program Services at least provides consequences for adopting a confusing official mark, it is currently under appeal and it is not certain that the decision will be upheld. This is another instance of the Federal Court trying to set boundaries for official marks that simply have not been set in the legislation.
Official marks are theoretically perpetual in duration. They remain on the register until they are either voluntarily withdrawn by the ‘owner’ (and owners rarely think to do this), or until a successful (and costly) action for judicial review results in one being struck from the Register. Until the Ontario Association of Architects decision in 2002 tightened up the meaning of ‘public authority’, official marks were handed out like Halloween candy, and many entities that were not ‘public authorities’ were able to obtain official marks. Many of these erroneously-issued official marks continue to exist today; in fact, the Register of Trademarks has become cluttered with official marks that are either invalid or no longer in use.
Sections 215 and 216 address at least part of this last problem. They provide an administrative process through which either the Registrar or any person prepared to pay the prescribed fee can have an official mark invalidated if the entity that obtained the mark “is not a public authority or no longer exists.” This is a good thing. I would, however, suggest one amendment to the proposed new s. 9(4). Where it is the case (as per the new s. 9(3)) that the entity that obtained the official mark was not a public authority or has ceased to exist, s. 9(4) allows the Registrar to give public notice that subparagraph (1)(n)(iii) “does not apply with respect to the badge, crest, emblem or mark”. As it is currently worded, this is permissive– the Registrar “may” give public notice of non-application. In my view, it should read:
(4) In the circumstances set out in subsection (3), the Registrar may, on his or her own initiative or shall, at the request of a person who pays a prescribed fee, give public notice that subparagraph (1)(n)(iii) does not apply with respect to the badge, crest, emblem or mark.
There is no reason why a person who has paid a fee to have established the invalidity of an official mark should not have the Registrar give public notice of this.
I would also suggest that the process for invalidating official marks should extend to those that have not been used within the preceding three years – in other words, something parallel to s. 45 of the Trade-marks Act which provides an administrative procedure to remove unused registered trademarks from the Register. There are hundreds of ‘public authorities’ at federal and provincial levels across Canada, and they adopt official marks for all sorts of programs and initiatives, many of which are relatively transient. There should be a means by which official marks can simply be cleared from the Register when they are no longer used. Thus, I would recommend adding new subsections 9(5) and (6) to the effect that:
(5) The Registrar may at any time – and, at the written request of a person who pays a prescribed fee, made after three years from the date that public notice was given of an official mark, shall, unless the Registrar sees good reason to the contrary – give notice to the public authority requiring it to furnish, within three months, an affidavit or a statutory declaration showing that the official mark was in use at any time during the three year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.
(6) Where, by reason of the evidence furnished to the Registrar or the failure to furnish any evidence, it appears to the Registrar that an official mark was not used at any time during the three year period immediately preceding the date of the notice and that the absence of use has not been due to special circumstances that excuse it, the Registrar shall give public notice that subparagraph (1)(n)(iii) does not apply with respect to the badge, crest, emblem or mark.
These are my comments on changes to the official marks regime that most closely relate to the amendments in Bill C-86. The regime has other deficiencies which I would be happy to discuss.