Archived — Practice Notice: Public Authority Status under Sub-paragraph 9(1)(n)(iii), Publication Date: 2006-02-01

Public Authority Status under Sub-paragraph 9(1)(n)(iii)

Publication Date: 2006-02-01

NOTE: This notice replaces the notice on public authority status under sub-paragraph 9(1)(n) (iii) published in the Trademarks Journal on October 02, 2002.

This notice is intended to provide guidance on current Trademarks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between these notices and the applicable legislation, the legislation must be followed.

Obligation To Evaluate Public Authority Status

The Registrar of Trademarks will require evidence of public authority status on every request to publish an official mark pursuant to sub-paragraph 9(1)(n) (iii) of the Trade-marks Act Stadium Corporation of Ontario Ltd. v. Wagon-Wheel Concessions Ltd., [1989] 3 F. C. 132 (F.C.T.D.)].

Public authority in Canada

In order for an entity to claim the benefit of subparagraph 9(1)(n)(iii) of the Trade-marks Act, it must be a public authority in Canada [Canada Post Corporation v. United States Postal Service (unreported, 2005 FC 1630)].

Test To Be Used To Evaluate Public Authority Status

The Registrar of Trademarks will apply the two-part test, adopted by the Federal Court of Appeal [Ontario Association of Architects v. Association of Architectural Technologists of Ontario, 19 C.P.R. (4 th) 417, hereinafter referred to as "Ontario Association of Architects"].

The two-part test is made up of the following elements:

  • a significant degree of control must be exercised by the appropriate government over the activities of the body; and
  • the activities of the body must benefit the public.

Governmental Control within Canada

In order to satisfy the first element of the two-part test, an entity must be subject to governmental control within Canada   [Canada Post Corporation v. United States Postal Service (unreported, 2005 FC 1630)].

The test of governmental control calls for ongoing government supervision of the activities of the body claiming to be a public authority for the purpose of sub-paragraph 9(1)(n)(iii).

The fact that a self-regulatory body is statutory, and its objects and powers may be amended unilaterally and exclusively by the Legislature that created it, does not in law constitute "governmental control" in this context.

The test of governmental control requires that the government be enabled, directly or through its nominees, to exercise a degree of ongoing influence in the body's governance and decision-making.

The following are examples of the types of governmental control the Registrar may look for in evaluating public authority status (Ontario Association of Architects):

  • legislation conferring powers on the relevant Minister to:
    1. review the activities of the body;
    2. request the body to undertake activities that, in the Minister's opinion, are necessary and desirable for implementing the intent of the Act;
    3. advise the body on the implementation of statutory schemes.
  • legislation conferring powers on the Lieutenant Governor in Council to:
    1. approve the exercise of the body's regulation-making;
    2. appoint members of the body's committees.

The fact that a body is incorporated as a non-profit corporation with charitable objects, has obtained tax exempt status, the ability to issue charitable receipts to donors, or that, as a foreign charity operating in a Canadian province, it could be asked to provide its accounts, financial and corporate information to the government, is not sufficient to conclude that it is under sufficient significant government control to be a public authority [Big Sisters Association of Ontario and Big Sisters of Canada v. Big Brothers of Canada, 75 C.P.R. (3d) 177 and Canadian Jewish Congress v. Chosen People Ministries, Inc. and The Registrar of Trademarks, 19 C.P.R. (4 th) 186, affirmed 27 C.P.R. (4 th) 193].

Public Benefit

In determining whether a body's functions satisfy the public benefit requirement, it is relevant to consider its objects, duties and powers, including the distribution of its assets. In this context, a duty to do something that is of benefit to the public is relevant as an element of "public benefit", even though it is not a "public duty" in the sense of being legally enforceable by a public law remedy, such as an order of mandamus or its equivalent (Ontario Association of Architects).

Examples of activities which are for public benefit include:

  • regulating the practice of a profession, setting and enforcing standards of professional competence and ethical conduct of the body's members;
  • being under a duty to maintain an accurate register of members and to make it available for public inspection;
  • the fact that the decisions of a statutory self-regulatory body regarding membership and discipline are subject to appeal to a Court of justice on questions of fact and law tends to indicate that the public benefits from the proper performance by the body of its functions.

The fact that the activities of a body may also benefit its members is not a fatal objection to characterizing them as also benefiting the public.

NOTE: The fee set out in Item 12 of the Tariff of Fees, that is payable on the filing of a request pursuant to paragraph 9(1)(n) or (n.1) of the Act, is considered to cover the work associated with creating the file and is therefore not transferable or refundable.

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