Many public authorities, including municipalities, use names, crests, flags and emblems to distinguish themselves from other bodies and institutions. Obtaining trademark protection of a mark under Section 9 of the Trademarks Act is an ideal way for public bodies to fully safeguard their intellectual property.
Obtaining a Section 9 "Official Mark" under the Trademarks Act gives a public body extraordinary protection of its mark above and beyond that of a regular registered trademark. The owner of an Official Mark can prohibit any person from adopting a trademark that is likely to be mistaken for any mark that is adopted and used by any public authority in Canada as an Official Mark in respect of which the Registrar of Trade-marks has given public notice of its adoption and use. Despite the fact that the Registrar of Trade-marks gives public notice of a public authority's adoption and use of the Official Mark in association with certain wares or services, the protection given to Official Marks is not limited to a specified list of wares and services as it is with regular registered trademarks. After public notice of the mark has been given, no one else is permitted to adopt the mark in relation to any wares or services without first obtaining the consent of the owner. Furthermore, an Official Mark may be given Official Mark status even though it is merely a name that is clearly descriptive, not highly distinctive and/or confusing with an existing registered mark. Once given official status, it is very difficult for third parties to challenge the mark.
Who may successfully apply for an Official Mark? Granting of an Official Mark requires that the Registrar of Trade-marks be satisfied that the applicant is a "public authority". In particular, the Registrar must find that there is a significant degree of control exercised by a government over the activities of the body and that the activities of the body benefit the public. The federal and provincial governments, cities, municipalities, as well as most universities and colleges are recognized by the Registrar as public authorities.
For more information about Official Marks, please contact Wing Yan at wing.yan@nelliganlaw.ca.
