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Displaying items by tag: trademarks

The U.S. Trademark Trial and Appeal Board (TTAB) has finally ruled on a dispute involving the legitimacy of the Washington Redskins ‘Redskins’ trademarks. In a 2-1 decision in Blackhorse v. ProFootball, Inc.,, the Board ruled that at the time of its registration in the 1960s, the term “redskins” was disparaging to Native Americans. Since U.S. trademark legislation bars the registration of trademarks that are scandalous, immoral or disparaging, the decision that this term was disparaging at the time of its registration means that the registrations of 6 marks featuring the term “Redskins” are invalid. The result is that these trademarks will be struck from the trademarks register (pending the inevitable appeals). The team’s logo was not part of the challenge and remains a registered trademark.

There has long been controversy over the football team’s name – a previous challenge to the trademarks’ validity was unsuccessful due to procedural defects. There have also been repeated calls for the team to change its name voluntarily. More recently, President Obama suggested that it was time for the Redskins to choose a new name. The Redskins’ owner, Dan Snyder, has so far resisted calls for change, and he has indicated that the organization will appeal the TTAB decision.

It should be noted that even if the TTAB decision is upheld, the team will not be forced to change its name. The loss of the trademark registration is not a ban on using the name. It does mean, however, that the Redskins organization will lose the (substantial and significant) benefits of holding a registered trademark. They will lose national protection for the mark, making it much more difficult for them to protect the name against use by others.

As I noted in an earlier post regarding controversy in Canada around the adoption of the same name for a youth amateur football club, the Washington Redskins currently hold registered trademarks in Canada for both their team name and logo. These marks were registered in the 1980s. Although Canada’s Trade-marks Act does not specifically bar marks that are “disparaging”, it does have a clause that renders unregistrable those marks that are “scandalous, obscene or immoral”. Since a mark that falls into this category is not registrable, it is possible to challenge the validity of the trademark on the basis that it was not registrable at the time of registration. No one has yet brought such a challenge to the Redskins’ marks in Canada. There is very little case law in Canada on the scope or interpretation of “scandalous, obscene or immoral”, and, particularly in light of the TTAB decision in the U.S., it would be interesting to see what the outcome of such a proceeding might be.

(If you are interested in reading more about scandalous, obscene and immoral trademarks, have a look at my recent article titled Antisocial Trademarks, which is published in the Trademark Reporter.)

Published in Trademarks

After years of neglect, trademark law reform is now all the rage in Canada. Presently, two government bills propose major amendments to the Trade-marks Act – those in the Budget Implementation Act have proven highly controversial; those in Bill C-8 would introduce major changes, although these are less controversial. Yesterday, Liberal MP Geoff Regan introduced a private member’s bill, Bill C-611, which has as its goal the overhaul of official marks under the Trade-marks Act.

Interestingly enough, neither of the government’s trademark law reform bills tackles official marks, notwithstanding that the Report of the Standing Committee on Industry, Science and Technology in March 2013 on the Intellectual Property Regime in Canada recommended that something be done about these marks. Specifically, the report stated:

The Committee recommends that the Government of Canada introduce legislation which amends parts of the Trade-marks Act dealing with official marks to restrict the scope of official marks to important national government symbols and to narrow the definition of public authorities to avoid stifling innovation and distorting markets.

Official marks are a rather unique Canadian creation. Essentially, they allow “public authorities” to bypass the normal procedures (including all of the checks and balances present in the Act) for obtaining a trademark. Instead of applying for a trademark – which is then examined and opened for opposition to insure that it is indeed registrable and does not trample on the trademark rights of others – a “public authority” need only ask the Registrar of Trademarks to give public notice of its adoption and use of an official mark. There are no limits to official marks – they can be identical to or confusing with existing marks, and they can be generic, descriptive or deceptively misdescriptive. Further, unlike regular trademarks which can expire if the registration is not renewed, or which can be lost for non-use, official marks are potentially perpetual.

One of the reasons for the creation of the category of official marks, was perhaps, to save governments from the costs of registering and maintaining trademarks in relation to their various programs and services. While this might be an acceptable rationale for government programs and services in the strict sense, it makes less sense for government entities engaged in the marketing of alcohol and gaming to be exempt from the traditional rules (and checks and balances) of the trademark system.

In addition, until the Federal Court began its attempts to reign in official marks in the early 2000’s, the concept of a “public authority” was rather vague, leading to a flood of bogus official marks. And once public notice is declared, there is no mechanism in place to permit an easy removal of the mark – judicial review must be sought in the Federal Court of the Registrar’s decision to give public notice. This places a costly onus on businesses or other entities that run up against rogue official marks. For example, the Canadian Jewish Congress was obliged to go to court to reverse the decision to allow a U.S.-based evangelical church with a mission to convert Jews to Christianity to hold an official mark for the menorah. In 2005 I wrote an article about a battle between a private company, the Bluenose Heritage Preservation Trust Society and a Nova Scotia business over licensing fees that the Society sought to charge for the use of the name and image of the iconic Nova Scotia schooner. The Society had obtained official marks related to the Bluenose, notwithstanding that it was difficult to see how it qualified as a public authority. The litigation came to an end when the Province of Nova Scotia intervened. The Province subsequently sought to have notice given for its own Bluenose official marks. It is an illustration of the multiple defects of this regime that if you search the trademarks register you will find listed identical official marks held both by the Society and by the Province of Nova Scotia.

It would be easy to go on and on about the problems of official marks and about the problematic exercise of rights in such marks – there are many examples that can be drawn upon. (Do you remember a not too distant news story about a young Nova Scotia musician pursued by the Mint because his album cover featured Canadian pennies (which are official marks of the Mint)? Do you remember Canadian pennies?) But the point here is to discuss the new bill introduced to reform the official marks regime. I should state from the outset that I was consulted on the drafting of this Bill (along with my colleague Andrea Slane). The goal of the exercise was to reform the official marks regime. I note that a good argument could still be made for its wholesale abolition.

The main goal of the proposed reforms is to address some of the regimes key deficiencies. First, the scope of official marks is limited – both in terms of who can get them, and for what purposes. “Public authority” is defined – even more narrowly than in the definition adopted by the Federal Court of Appeal to limit access to official marks. The objective is to limit official marks only to those public authorities with the strongest links to government. Official marks are also available only to public authorities for their names, emblems or logos, or in relation to their programs or services. Access to official marks by universities is limited only to Canadian universities (under the current law, universities in any country of the world can (and do) obtain official marks.)

A second feature of the bill is that it provides for a process by which objection can be made to the public notice given by the Registrar of the official mark. This is meant to be a more expeditious and cheaper procedure than seeking judicial review of a mark. It also introduces other grounds for objection to the official mark, including that it might have a serious adverse effect on the owner of an existing trademark, that it is a generic term, or that it is otherwise not in the public interest.

A third feature sets a term of 10 years of protection for official marks. This protection can be renewed by the public authority – but if it is not, then the mark is no longer protected.

The bill aims to do something that has long needed to be done – it seeks to curtail access to official marks, to place some limits on the marks themselves so as to lessen their impact on other trademark holders, and to provide a mechanism whereby official mark deadwood can be removed. These are certainly important objectives. It is to be hoped that the bill will at least serve to put an option on the table for public debate, with a view to achieving much-needed reform in this area.


Published in Trademarks

The federal government’s recently introduced Budget Implementation Bill (Bill C-31) is accompanied once again by hundreds of pages of unrelated amendments to various federal laws. Almost lost among all of this legislative noise are 36 pages of amendments to the Trade-marks Act (which, once these amendments are passed and not a moment too soon, will be renamed the Trademarks Act). These amendments are all ones considered to be necessary in order for Canada to implement the Madrid Protocol and the Singapore Treaty – two of the international treaties tabled in Parliament earlier this year.

One could argue that since the amendments do not go further than the implementation of these treaties, then there is little harm in pushing them through in the rather bloated charade of democracy that budget implementation bills have become. Unfortunately, what Canadians are really being denied is an opportunity to hear debate on whether the implementation of these treaties is actually in the country’s best interests. Although there are arguments to support the implementation of treaties that harmonize certain procedures around the registration of trademarks and that permit Canadian companies to take advantage of a simplified international filing procedure where trademark registration is sought in multiple jurisdictions, there are also arguments for the status quo. The changes to Canada’s trademark system – particularly the abandonment of a requirement that a trademark be used before it is registered – could very well lead to a flood of trademark registrations in Canada by foreign companies that will clutter the register with unused trademarks and that will ultimately make it more difficult for Canadian companies to adopt, use and register the marks of their choice.

The amendments to the Trade-marks Act introduced in Bill C-31are likely to leapfrog over the amendments proposed in Bill C-8, which has been making its sluggish way through the more usual democratic channels (you know – where there is debate on the merits of the amendments, committee hearings, and sometimes even changes made to improve the bill). In fact, a good part of the trademark-related content in the Budget Implementation Bill consists of sorting out when different provisions will come into effect relative to C-8, particularly where they depend upon certain changes being implemented by C-8. This promises a confusing tangle of changes to the law; trademark lawyers will have to be consoled by the fact that they bill by the hour.

Published in Trademarks
Tuesday, 18 February 2014 14:52

Ambush Marketing and the Olympics

With the winter Olympics now getting massive media attention, it is perhaps worth pausing to think about that other, non-official Olympic activity – ambush marketing. Indeed a recent threat of litigation by the Canadian Olympic Committee against North Face for ambush marketing is an indicator that the Olympic marketing games are also in full swing.

Like many other major sporting events, the Olympics have become heavily dependent on funding raised through sponsorship programs. The International Olympic Committee (IOC), in fact, has a carefully structured sponsorship program called TOP, which manages Olympic marketing opportunities. Sponsors pay substantial sums of money for the rights to use certain Olympic symbols in tightly controlled ways. What a sponsor is paying for is the right to associate their own brand with the brand values of the Olympics.

The Olympic logos and symbols, used by the Olympic organizers and licensed for use to sponsors, are protected by trademark or Olympic-related legislation. Any company that uses these marks without permission infringes upon these trademark rights. Ambush marketing is a term used to describe marketing practices which attempt to create an association with a major event without the ambushing company having paid for sponsorship rights. However, what distinguishes it from simple trademark infringement is the fact that ambush marketers generally do not use the trademarks of the event organizers. Instead, ambush marketers create associations through more oblique references to the event itself.

The huge amounts of money involved in the organization of major events, and in paying for sponsorships, have led organizations like the IOC to push for legislation to protect specifically against ambush marketing. In fact, it is now no longer possible to succeed in a bid to host the Olympics without a promise to enact anti-ambush marketing legislation. Canada did so for the Vancouver 2010 Olympic Games. Section 4 of the Olympic and Paralympic Marks Act specifically created a “right of association” and two Schedules to the legislation set out lists of common words that might be considered to trigger an illegal association. These words included: gold, silver, bronze, winter, 2010, twenty-ten, Whistler, Vancouver, and Games.

Anti-ambush marketing legislation is controversial. Some of this controversy is discussed by Benoit Séguin and me in a recent article on the subject. (The article is published in a new book titled Intellectual Property for the 21st Century: Interdisciplinary Approaches). It is not clear, for example, that ambush marketing legislation is truly necessary – beyond serving as a ‘comfort blanket’ for event sponsors. Concerns have also been raised that by attempting to outlaw “associations”, such legislation is unduly broad and vague. It also goes far beyond preventing major competitors of event sponsors from launching ambush marketing campaigns leading up to and during the event. For example, such legislation generally applies equally to all businesses, large or small, even if no one would expect a small local business to be a major event sponsor. Such laws limit the ability of small businesses to make even indirect reference to a major event taking place within their own community. This would seem to be a significant – and rather disproportionate -- limitation on freedom of expression. Further, such legislation privileges event organizers over all other stakeholders. Many athletes or national sporting organizations have their own commercial sponsors – indeed, athletes might be unable to train or compete without such sponsors, and national sporting organizations would not be in a position to develop young talent without commercial sponsorship. Yet when an athlete competes in the Olympics, their own commercial sponsors are limited in the extent to which they can celebrate their sponsored athlete’s achievement without running afoul of anti-ambush marketing laws. In another article, my co-authors and I also raise the issue of whether anti-ambush-marketing legislation might actually allow large corporations to put their legal teams to work to exploit loopholes in the legislation, with the result that major competitors of event sponsors are able to launch challenge-proof ambushes, while ‘associations’ created by small and medium businesses lacking the same resources are suppressed by the law.

Part of the problem with anti-ambush marketing laws is that there is a very broad range of conduct that can fall within the ambit of an “association” with an event. Some activity is clearly more problematic than others. In the case of North Face, it would appear that the company launched a new line of red and white, maple leaf flag-emblazoned sportswear in the lead up to the Sochi Games. Although no Olympic logos were used on the clothing, some items apparently featured dates linked to the Games and some promotional materials may have made direct reference to Sochi. The collection was initially called “village wear” and is now referred to as the “international collection”. The characters RU14 also appeared on some items. NorthFace is not, of course, an Olympic sponsor. The matter may never head to court – if it did, it might provide an opportunity for the courts to explore some of the challenging legal questions around the limits of legal protection against ambush marketing.

Published in Ambush Marketing

A terrific collection of papers that I had the pleasure of editing along with Mistrale Goudreau, Courtney Doagoo and Madelaine Saginur, titled Intellectual Property Law for the 21st Century: Interdisciplinary Approaches, has just been published by Irwin Law. The book is available for sale from Irwin as an eBook or in paperback format. It is also published under a Creative Commons Licence, and individual chapters can be downloaded here.

This book flows from a workshop we hosted at the University of Ottawa. Our goal was to bring together Canadian academics interested in interdisciplinary approaches to IP law. Participants were from many different disciplines, including law, English, cultural studies, music, library and information studies, criminology, political science, and sports management. The papers cover a broad range of IP subject matter, including copyright, trademark and patent law, as well as laws restricting ambush marketing, and personality rights.

The collection of papers pushes us to think about the importance of interdisciplinary perspectives and approaches in a context where intellectual property law is no longer simply a matter of commercial relationships, but also trenches deeply on issues of economics, culture, health, innovation, creativity, and intellectual freedom. Some of the papers use insights from other disciplines to examine how the law should be interpreted and applied (in the context of copyright infringement analysis in music or film, for example), others bring to bear the theories of methodologies of other disciplines to elucidate the historical evolution of certain IP rights, or the political discourse surrounding IP law and its reform. There is truly an immense breadth of content here, from a discussion of evidentiary problems in business method patent litigation to the impact of commercialization approaches to scientific research on academic scientists. Check out the table of contents to get a sense of the full range of topics.

Published in Copyright Law
Wednesday, 30 October 2013 14:26

Geographical indication protection in CETA

The new Canada-Europe Trade Agreement (CETA) is poised to expand the protection available to European geographical indications in Canada. Currently, under the Trade-marks Act, protection is available only to a limited number of geographical indications used in relation to various wines and spirits. CETA will expand not only the number of protected geographical indications; it will also enlarge the categories of protected indications to cover a broad range of agricultural products such as cheese, meat, olives, and vinegars.

A geographical indication (GI) is, in essence, a word or combination of words that indicates the geographical point of origin of a particular product in circumstances where that geographical origin gives the product distinct qualities or characteristics. These characteristics may be due to features that are particular to that region (a certain soil type or climate, for example) in combination with social factors (a particular tradition of production developed through a long history). Europe, of course, with its many long-standing local traditions and customs relating to food and wine, is the source of many classic and sought after products that North American producers have been happy to imitate and to sell using the same name to identify the type of product.

Because the text of CETA has not been made public, it is possible only to rely upon the short snippets of information that have been provided to the public regarding the scope of this agreement. It is not clear, therefore, whether the provisions regarding geographical indications will have a prospective effect only (permitting existing producers of products labelled as, for example, FETA or ASIAGO, to continue with their usage of these terms), or whether it will apply to all producers. It may be that it will not apply to those who have acquired actual trademark rights in a particular word or combination of words, but that it will apply to those who have merely used the geographic descriptors in labelling their products. Some reports indicate that descriptors will still be permitted with modifiers. Thus, instead of referring to one’s product as ‘Feta cheese’, it might be necessary to refer to it as Feta-type cheese, or Feta-style. While the details will obviously determine the full impact of CETA, it is without doubt that this agreement will affect Canadian producers, who have already expressed concerns over how the increased protection of geographical indications will impact the marketing of their products.

Relative to Europe, Canada is largely new to the development of long-standing traditions of regional agricultural production of distinctive products. Where this has occurred, the geographical designations for these products may be protected using certification marks. Certification marks are trademarks that can be applied to categories of products or services that are distinctive by virtue of the character or quality of the product, the methods of production, the production by a certain category of people, or by geographic place of origin. The owner of a certification mark is not a producer, but is rather an organization that is responsible for licensing the use of the mark by those who meet the criteria established as part of the registration of the mark. Canada’s First Nations, which have many distinctive traditions that are tied to territory, not simply around food but also around textiles and artisanal works, have begun to explore the use of certification marks to identify the authenticity of their products in the face of multiple imitators (consider the registered certification mark for COWICHAN in relation to clothing). Nevertheless, while certification marks offer some protection, they are different from GIs in important ways. In the first place, once protected, a GI becomes a prohibited mark: a GI, or a mark closely resembling it, cannot be adopted, used or registered as a trademark by anyone not entitled to its use. Further, this protection is at the state level: the registrar of trademarks maintains a list of protected GIs, and these GIs are extended comparable protection in other countries through the vehicle of trade agreements. By contrast, an organization that applies for a certification mark must comply with the rules regarding the registration and maintenance of trademark rights. The protection of the mark is generally only against the adoption by another of a mark that would cause confusion with the certification mark. Finally, a certification mark will only be protected in those countries in which the organization has itself sought to register the mark; in attempting to do so, the organization may run up against pre-existing confusingly similar marks in another country, and may find itself without the protection it seeks. It is clear that the potential for the use of protected geographical indications on behalf of Canadian producers remains underdeveloped in Canada. The expanded protection of geographical indications in CETA is, by all accounts, a one-way street.

The CETA will include a list of protected geographical indications as negotiated by the parties. This list is expected to include GIs such as Grana Padano, Roquefort, Feta, Asiago, and Prosciutto di Parma (and many more). It is reported that there will also be a mechanism that will permit other GIs to be added to the list on an ongoing basis.

Published in Trademarks
Wednesday, 25 September 2013 13:02

"Redskins" Trademarks in Canada

Last week, the CBC reported that an amateur football club in Nepean, Ontario, reached the decision to change its name following a spate of negative publicity that enveloped it after it was revealed that a human rights complaint had been filed in relation to its name. The Nepean Redskins had used this name for their club since 1981. The organization's jerseys, helmets and website also feature the same Indian-head logo as the U.S.-based Washington Redskins NFL team.

In the United States, the Washington Redskins have long faced challenges to the validity of their registered trademarks under section 2(a) of the Lanham Act. This provision bars from registration any mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Although these challenges have not been successful to date for mainly procedural reasons, they are ongoing. In fact, arguments in a new challenge were heard in March of 2013, and the decision in this matter is pending. There are signs that the trademark may well be in real jeopardy this time, and even the NFL Commissioner Roger Goodell has suggested that it might be time for a change. Of course, even if the trademark registration is canceled, the team could continue to use the mark as an unregistered trademark – one with a substantial amount of accumulated reputation and goodwill. Nevertheless, the loss of the protection available to registered trademarks will make the team’s enforcement of its rights much more difficult.

It may come as a surprise to many Canadians that the Washington Redskins also hold registered trademarks in Canada since 1980. The marks are registered for use in association with televised games, as well as for a range of other branded merchandise such as jerseys, hats, sports equipment and a range of other items.

Like the U.S. legislation, Canada’s Trade-marks Act bars the registration of trademarks that are considered “scandalous, obscene or immoral”. Marks that are not registrable at the date of registration can also be invalidated after the fact on the application of the Registrar or “any person interested”. No attempt has ever been made to challenge the validity of the registration of the Redskins mark in Canada; indeed there is scarcely any case law in Canada that touches on the interpretation of the “scandalous, obscene or immoral” bar to registration. It is not clear, for example, whether it would be interpreted to have the same breadth as the U.S. provision which also bars the registration of marks that are disparaging. Nevertheless, the potential impending demise of the Redskins’ trademarks in the U.S. raises interesting questions as to the fate of the Canadian registrations. If, after all, the mark is considered too offensive to be registered in the United States, would there any reason to consider it less offensive in Canada?


Published in Trademarks

Last year Canada (finally) responded to the changes wrought by the internet and amended the Copyright Act to address, among other things, the creation, reproduction and dissemination of works in a digital environment. The Supreme Court of Canada has also recently re-emphasized the need to interpret the law in a technologically neutral manner. These developments, however, may still not be enough to prepare us for the new wave of digital reproduction technology that is coming with 3-D printing. As was the case with other digital reproduction technologies, 3-D printing technology is now moving from very expensive devices predominantly in the hands of corporate owners, to increasingly inexpensive technology on the verge of becoming popularized among ordinary consumers. This shift is similar to those which we have already seen with respect to personal and mobile computing.

Three-dimensional objects of widely varying complexity can now be printed using this technology using a variety of materials. A recent news story has even reported on the potential for this technology to print organs for transplant. The printers are evolving to use a wide range of materials that go well beyond the initial plastics and polymers.

Three-dimensional printing is likely to present some significant challenges for intellectual property regimes. This is certainly the thrust of a recent article on the subject in the World Intellectual Property Review (WIPR). Unlike 2-D printing, which is predominantly useful in reproducing works protected by copyright, 3-D printing affects copyright, patent, industrial design and trademark law. We are not far from a future where individuals widely use online file sharing networks to widely distribute plans that will allow for the reproduction of all manner of 3-D objects, including utilitarian objects, replacement parts, jewellery, toys, guns, uniquely configured, eye-catching products, miniatures and action figures based on copyright protected characters from books or movies.

Canada’s IP laws – like those of other countries – may not be fully ready to deal with the challenges posed by affordable and accessible 3-D printing. In the first place, the reproduction of 3-D objects may implicate one or more IP statutes. Three-dimensional objects that are artistic in nature are often protected by copyright law; the drawings or plans for the making of three-dimensional objects may also be protected as artistic works under copyright law. The visual appearance and design features of utilitarian objects can be protected through industrial design registration. Three-dimensional features of objects may, if they are distinctive of their trade source, be protected as trademarks. Functional 3-D items may also be protected under patent law. Clearly, there is IP protection available for 3-D items, but it is highly fragmented which will likely make it harder for individuals and companies to understand the parameters of legal activity. Further, while copyright law has been substantially revised to deal with the challenges posed by easy digital reproduction and the online dissemination of works, the other regimes have not received attention in this regard. Much has also been done to address the different ways in which copyright law may be infringed online – this includes a number of important new defences to copyright infringement that seek to create balance, along with an adjustment of statutory damages available where copying is non-commercial in nature. The other IP laws in Canada are not well adapted to copying by private individuals for non-commercial purposes. Three-dimensional printing may thus bring with it a paradigm shift which will no doubt create tensions between IP owners and users that may ultimately have to be addressed by the legislature. Yet we are still grappling with old-tech IP reform. For example, a new IP Bill C-56, currently before Parliament, addresses counterfeiting under both the trademark and copyright regimes, but the focus of these amendments is on the movement of goods across borders, and on enhancing the available measures to stop the importation of infringing works. Just as the law is moving towards addressing the flow of counterfeit goods across the border, counterfeiting may soon shift to digitally networked 3-D printers, the online dissemination of plans and designs, and small scale reproduction of works by multiple and widely dispersed individuals.

Published in Copyright Law
Wednesday, 03 July 2013 09:48

Band’s Logo Attracts Provincial Ire

The Alberta rock band named Jr. Gone Wild has been in the news after Alberta’s Department of Culture ordered it to stop using a modified version of the province’s official emblem as part of the band’s logo. A photo of the band’s logo can be viewed along with the Edmonton Journal article on this issue.

A law titled the Emblems of Alberta Act makes it an offence to use “for commercial or business purposes” the armorial bearings of Alberta without consent. It is also an offence to use “any design so nearly resembling the armorial bearings of Alberta or any portion of them as to be calculated to deceive”. Although the band is using the arms for commercial purposes (it is selling T-Shirts emblazoned with its logo), it is not clear that this use of the modified design is calculated to deceive anyone. It remains an open question whether anyone viewing the logo would be led to believe that the band is in any way the official rock band of Alberta.

The Minister of Culture has also enacted regulations governing official emblems. According to these regulations, the emblem can be reproduced, used or displayed for non-commercial purposes so long as the use or display is in good taste. Commercial use is also permitted under certain conditions. These are that the use:


(a)    is free from any implication that the commercial or business purposes have any approval or accreditation from the Government,

(b)    is based on original drawings obtained from the Government, and

(c)    conforms, in the opinion of the Minister, to good taste.

The regulations are not clear about whether a modified version of the emblem can be used at all. For example, it is not clear whether the “good taste” requirement relates to modifications, or simply to the context in which the emblem is to be used. According to the story in the Edmonton Journal, it is not yet clear whether the band will change its logo and dispose of its unsold merchandise, or whether it will disregard the Minister’s order.

It is not unusual for governments to pass laws to protect their official emblems and insignia. For example there are similar statutes in Saskatchewan (with much stiffer penalties), and in Manitoba. There is certainly a public interest in ensuring that people are not misled into believing that certain products or services have been offered or endorsed by the government when they have not. Provincial arms, crests and flags are also listed as prohibited marks under s. 9(1)(e) of the Trade-marks Act. This means that these marks, or ones “so nearly resembling as to be likely to be mistaken” for them may not be adopted or used “in connection with a business, as a trade-mark or otherwise”. Thus there is ample law to protect against misuse of these signs or symbols.

The question is, of course, what the limits of freedom of expression are when it comes to the insignia of government, or other public symbols. According to the report in the Edmonton Journal, the band sees itself as “just doing art”. Artistic expression is, of course, protected expression in Canada. Yet like other of Canada’s civil liberties, it is subject to “reasonable limits demonstrably justified in a free and democratic society.

The Royal Canadian Mint recently backed down from a demand for licensing fees from a musician who used images of the penny on his album cover. There was also considerable controversy in Nova Scotia in the mid-2000’s when a company charged with the maintenance and operation of the Bluenose II began demanding licensing fees from local businesses who used the name or image of the iconic schooner. Of course, in each of these cases it was the symbol or name itself that was used, and not a modified version. And, while iconic, the penny and the Bluenose are not official insignia of government. The question remains as to how the balance should be struck between the public interest in the protection of official arms and insignia and the public interest in the freedom to use these insignia as a vehicle for expression.

Published in Trademarks

If there is any need for further evidence that the official marks provision in s. 9(1)(n)(iii) of the Trade-marks Act is in dire need of reform, then it can be found in the advertisement by Canada Post in 2005 of official marks in the words POSTAL CODE and CODE POSTAL.

Official marks are a special species of trademark available only to “public authorities.” In theory, a public authority is an entity that is under the control of a federal or provincial government and that acts for the public benefit. While a regular business would have to choose a trademark that does not create confusion with existing registered trademarks, a public authority can pick pretty much any mark it chooses. Further, unlike other businesses, public authorities can choose marks that are generic or descriptive. The adoption of “POSTAL CODE” and “CODE POSTAL” is a case in point. These words are generic: there really are no other words to describe the thing to which they refer – the postal code.

Public authorities also enjoy substantial procedural advantages when it comes to official marks: there is no opposition proceeding for official marks, there is no examination, and there are no registration fees. Once a public authority asks the Registrar to advertise an official mark (and has demonstrated that the mark has been adopted and used) the mark is protected. No one else may adopt, use or register the same mark, or one closely resembling it. Once advertised, such marks live on until voluntarily withdrawn, or removed from the register as a result of costly legal proceedings. For an example of the dysfunction of official marks, consider the fact that both the province of Nova Scotia (no doubt a public authority) and the Bluenose II Preservation Trust Society (almost certainly not a public authority) currently have the identical official mark BLUENOSE on the trademark register.

Official marks have a long history of abuse. The Federal Court has been kept busy trying to establish some standards for official marks – these are entirely absent from the legislation. Thus the court has established a test to aid in determining who qualifies as a “public authority”, has determined that public authorities must be Canadian, and has also set a test to determine whether certain official marks have been adopted and used by the public authority seeking to monopolize them. While the court has done its best, the entire system is flawed and is desperately in need of review.

This brings us back to POSTAL CODE. Canada Post, a public authority, has claimed official mark status for the very words in French and English that describe that series of numbers and letters that form a part of each address for mail delivery purposes. There is no obvious need for Canada Post to monopolize this term. There is no obvious public interest in having it monopolized. Yet ongoing litigation between Canada Post and Canadian company Geolytica suggests that Canada Post may be attempting to use a monopoly in the term POSTAL CODE/CODE POSTAL to make it more difficult for others to compete with it in the area of postal code related products or services. Geolytica, which offers a free online postal code look-up directory and other for-fee services through its Geocoder website is being sued by Canada Post for copyright infringement, and – surprise, surprise – for infringement of its official marks.

The recent report of the House of Commons Standing Committee on Industry, Science and Technology on the Intellectual Property Regime in Canada recommends amendments to the Trade-marks Act to narrow the definition of public authorities to help prevent abuse of official marks “to avoid stifling innovation and distorting markets”. Yet it is important to keep in mind that the problem is not just with those who wrongly claim to be public authorities. Actual public authorities might also use official marks to stifle innovation and distort markets – arguably this is what is happening with the POSTAL CODE/CODE POSTAL mark. Perhaps the reform of the official marks provision needs to be even more profound. Abolishing the category of official marks is a policy option that would require public authorities to play by the same trademark rules as all other businesses. With this as the default position – and with, perhaps, some clear exceptions for the names of government agencies or departments – we might finally see an end to the abuse of official marks.

Published in Trademarks
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