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Canada has a unique category of trade-marks called prohibited marks, known also as Section 9 marks or “official marks”. Section 9 of the Trade-marks Act includes a list of these prohibited marks, which 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 be mistaken for”.

Section 9 marks are controversial quirks of Canadian trademark law as they are not limited to a specific listing of goods and services, and need not be “distinctive” of the owner in any way in the manner of a “regular” trademark application. This results in extremely broad protection that can only be challenged in limited circumstances, as discussed below.

Paragraph 9(1)(n) of the Trade-marks Act provides an authority for the Trade-marks Office to register certain marks as “prohibited marks” 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”. A similar provision exists for a non-Canadian public authority to request for section 9 marks under paragraph 9(1)(i.3), with both provisions prohibiting the general public from adopting or using such marks. Here are some statistics from CIPO’s Trade-mark database:

As you can see, about 700 to 1,200 such section 9 marks were advertised every year. Since Section 9 marks are not subject to opposition, the only venue to cancel such marks once advertised is at the Federal Court of Canada.

It is very interesting to see how and what marks are advertised as section 9 marks in Canada. The following is a few samples of recently advertised section 9 marks:

Section 9 Mark

Application No.

Applicant

GET HIRED

0923622

The Governing Council of the University of Toronto

0923651

Bank Of Canada

WE PUT YOU TO WORK

0923304

The Loyalist College of Applied Arts and Technology

GET SMARTER ABOUT MONEY

0923425

Ontario Securities Commission

PLAY SAFE

0923370

Sunnybrook Health Sciences Centre

DID I WIN?

0923111

Western Canada Lottery Corporation

ONE

0923352

eHealth Ontario

HEALTHY CANADIANS

0922558

On behalf of Her Majesty the Queen in Right of Canada, as represented
by the Minister of Health

CASH COW

0923435

Western Canada Lottery Corporation (WCLC)

BEER 101

0923796

Niagara College of Applied Arts and Technology

SEASON'S GREETINGS

0923745

Western Canada Lottery Corporation

HOW WOULD YOU LIKE YOUR EGGS TODAY

0922880

Egg Farmers of Ontario

To read more about section 9 of the Trade-mark Act, check out our previous post about a Saskatoon craft distiller.

Author(s)

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2021 Nelligan O’Brien Payne LLP.

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