Is your trade-mark official? Are you sure?

publication date: Sep 25, 2013
author/source: Colin J. Thurston

On June 17, 2013, the Government delivered its response to the Standing Committee on Industry, Science and Technology’s report on the subject of The Canadian Intellectual Property Regime. While the document addresses a wide range of IP-related issues, charities should note the Government’s promise to review the current Official Marks regime, which many charities have used to protect their trade-marks in Canada.Colin Thurston photo

Official Mark protection broader than trade-mark

Under Canada’s Trade-marks Act, an entity which qualifies as a “public authority” is eligible to protect a badge, crest, emblem or mark as an “Official Mark” upon successful application to the Canadian Intellectual Property Office (“CIPO”). Obtaining Official Mark status grants broad protection which is not only wider in scope than a typical trade-mark registration, but also never expires or requires renewal.

But it no longer helps charities

Canadian registered charities were generally able to qualify as public authorities in order to obtain Official Mark protection for their trade-marks until a number of court decisions stated otherwise during the early 2000s. Prior to this change in the law, many charities were advised to obtain Official Mark protection in addition to applying for protection of their trade-marks under the normal registered trade-mark regime.

Of course, not all charities obtained or maintained the normal trade-mark registration, leaving some organizations with only invalid or unenforceable Official Marks in place to protect their brand.

Although the law changed approximately ten years ago, Official Marks advertised before that time still appear in the CIPO database. Though technically unreliable, they have not been invalidated or removed because of the onerous and cumbersome process involved in challenging an Official Mark.

Government may review, even discontinue, Official Marks

The continued existence of Official Marks has been criticized as restricting innovation and providing disproportionate protection for some marks. Therefore, in its June 17, 2013 report, the Government has responded by promising that it will “review the current issues around official marks and will consult with provinces, territories and stakeholders on possible changes to the official marks regime in order to remove barriers faced by Canadian companies seeking trademark registration.

Many charities still hold Official Marks, and many of these have still not applied for parallel normal registered trade-marks. Information regarding what Official Marks or registered trade-marks an organization holds can be found online by searching the Trade-marks Database of the Canadian Intellectual Property Office. 

Register your trade-mark!

If an organization discovers that its trade-marks are not registered, then the process to obtain a registration involves filing a trade-mark application with CIPO.  As preparing a trade-mark application is a technical process requiring knowledge of the Trade-marks Act, it is highly recommended that organizations obtain the assistance of a trade-mark agent.

Some organizations are surprised to learn that an Official Mark obtained in the past is not in fact a registered trade-mark, and may not be enforceable if challenged. Based on the recent comments from the Government, even though it is not certain when or if specific changes will be implemented, charities would be well advised to seek advice from legal counsel regarding what steps can be taken now to ensure their brand is protected and to prepare for possible changes in the future.

Colin J. Thurston is an associate in the Orangeville office of Carters Professional Corporation practicing intellectual property, information technology and privacy law, and can be reached by email.

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