Practice Notice: Official Marks pursuant Sub-paragraph 9(1)( n)(iii)

Publication Date: 2007-08-22

NOTE: This notice replaces the notice on public authority status under sub-paragraph 9(1)( n) (iii) published in the Trademarks Journal on February 01, 2006.

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 give public notice 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 sub-paragraph 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 (2005), 47 C.P.R. (4 th) 177 (F.C.T.D.); affirmed (2007), 54 C.P.R. (4 th) 121 (F.C.A.)].

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, (2002), 19 C.P.R. (4 th) 417 (F.C.A.); reversing (2000), 19 C.P.R. (4 th) 417 (F.C.T.D.), hereinafter referred to as "Ontario Association of Architects"].

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

Governmental Control

In order to satisfy the first element of the two-part test, an entity must be subject to governmental control within Canada and the government exercising the control must be a Canadian government. [ Canada Post Corporation v. United States Postal Service (2007), 54 C.P.R. (4 th) 121 (F.C.A.); affirming (2005), 47 C.P.R. (4 th) 177 (F.C.T.D.)]. 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):

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, (1997), 75 C.P.R. (3d) 177 (F.C.T.D.), affirmed (1999), 86 C.P.R. (3d) 504 (F.C.A.) and Canadian Jewish Congress v. Chosen People Ministries, Inc. and The Registrar of Trademarks, 19 C.P.R. (4 th) 186 (F.C.T.D.), affirmed 27 C.P.R. (4 th) 193 (F.C.A.)].

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:

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.

Evidence of adoption and use of an official mark

In light of the Federal Court decision in See You In- Canadian Athletes Fund Corporation vs. Canadian Olympic Committee (unreported) 2007 FC 406, the Registrar of Trademarks will require evidence of adoption and use of an official mark. While the Trade-marks Act does not define “adoption” or “use” in regards to official marks, it was held that a common feature of both “adoption” and “use” is that there is an element of public display FileNET Corporation v. Canada (Registrar of Trademarks) (2002), 22 C.P.R. (4 th) 328 (F.C.A.)]. Although sections 3 and 4 of the Trade-marks Act are not applicable to official marks, these sections may nonetheless assist in the interpretation of the meaning of “adoption” and “use” of official marks.

The evidence adduced must demonstrate an element of public display. In FileNET Corporation v. Canada (Registrar of Trademarks) (2002), 22 C.P.R. (4 th) 328 (F.C.A.), use consisting of advertising the mark on a government website in connection with an Internet service was considered sufficient use even though the actual service was not yet available.

The evidence in the following examples was found to be insufficient evidence of adoption and use of official marks:

In Piscitelli v. Ontario (Liquor Control Board) (F.C.T.D.) [2002] 1 F.C. 247, it was held that the display of a sign cannot constitute adoption or use of “millennium” as an official mark because the word millennium was not distinguished in any manner surrounding the text. In this case the usage of the word “millennium” in the sign was merely as a generic or descriptive expression and not as a “mark” within the meaning of section 9 of the Act.

Internal use of a mark in correspondence, e-mails and memoranda is not considered evidence of adoption and use of the mark [See You In- Canadian Athletes Fund Corporation vs. Canadian Olympic Committee (unreported) 2007 FC 406].

Evidence of adoption and use of an official mark by a licensee will not be considered adoption and use by the public authority [Canada Post Corp. v. Post Office (2000), 8 C.P.R. (4 th) 289, Canadian Rehabilitation Council for the Disabled d.b.a. Easter Seals/March of Dimes National Council v. Rehabilitation Foundation for the Disabled d.b.a. Ontario March of Dimes (2004), 35 C.P.R. (4 th), 270 (F.C.T.D.)].

NOTE : The fee set out in Item 12 of the Tariff of Fees, that is payable on the filing of a request pursuant to sub-paragraphs 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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