Official marks are a unique type of trademark protection in Canada, reserved for government entities, public authorities, and universities. These marks grant extensive and indefinite rights that can block businesses from registering similar trademarks. Understanding official marks is key to navigating potential challenges in your trademark registration process.
In Canada, specific entities can secure trademark protection through the adoption of an official mark, a designation recorded with the Canadian Intellectual Property Office (CIPO). These marks belong to a special category of intellectual property, available only to government entities, public authorities and universities. While they serve important public purposes, their extensive protections can create potential challenges for businesses trying to register their own trademarks.
Official marks have the ability to block other trademark applications, regardless of industry or category, making it essential for businesses to understand how they work and how to address them. In this blog, we will break down what official marks are, who can use them, and what business owners can do to protect their brands/trademarks when faced with these unique marks.
Who can apply for an official mark?
Official marks are not available to private businesses or individuals. They are exclusively reserved for:
-
- Public authorities: Organizations that operate in the public interest and have significant government oversight.
- Government entities: Federal, provincial, and municipal governments.
- Universities: Publicly funded post-secondary institutions that operate in the public interest.
Examples include badges, crests, and emblems, that are adopted and used by a public authority or other recognized entity, like this example below, owned by Sports Manitoba. An official mark is distinct from a regular trademark and provides the public owner with remarkably broad trademark protection.
What is the scope of protection of an official mark?
Official marks offer protections that go far beyond those of regular trademarks:
-
- No distinctiveness required: Official marks do not need to be distinctive. They can be generic, descriptive, and even similar or identical to existing trademarks.
- Long-lasting validity: Unlike regular trademarks, which need renewal every 10 years, official marks last indefinitely.
- Broad scope: Official marks apply across all goods and services, regardless of industry or category. CIPO will refuse any subsequent trademarks that closely resemble an official mark, even if the fields of use are unrelated. In contrast, with confusion assessments for regular trademarks, that fact that the goods and services are significantly different or in a different field would likely result in both trademarks being granted (depending on the circumstances).
What if your trademark hits a roadblock?
Imagine that you filed a trademark application and CIPO refuses the registration of your trademark because it resembles an official trademark. Here is how we recommend proceeding:
1. Request Consent: The most efficient way to overcome a refusal to register your trademark is through asking consent of the official mark holder. It may be worthwhile to ask consent, especially if the official entity is using the trademark in an entirely different field as you do.
If the official entity does not wish to provide its consent, then, depending on the case, you may be able to argue that the marks aren’t confusingly similar enough to each other to warrant the refusal.
2. Challenge the Mark’s Validity: Depending on the case, you can also apply to the Federal Court of Canada to invalidate the official mark by proving that:
• the owner is not a “public authority” in Canada; and
• the official mark was not “adopted and used” prior to the Trademarks Office granting the official mark status.
Be aware that this process can be costly and evidence may be hard to obtain.
3. Future Possibility to Inactivate an Official Mark: A recent amendment to the Trademarks Act (not yet in effect) will allow businesses to file a request with CIPO to inactivate an official mark. You will need to pay a prescribed fee and you must be able to prove that the entity that made is not a public authority or no longer exists.
Pro Tip: Do your homework!
The best way to avoid conflicts with official marks is through proactive research. We recommend doing an in-depth trademark availability search before adopting your brand name, logo, etc., to identify any existing or confusingly similar trademarks and official marks that might block your trademark registration.
Conclusion
For businesses operating in Canada, official marks represent both a unique challenge and a reminder of the importance of strategic IP planning. By understanding the landscape and taking steps to mitigate risks, you can safeguard your brand and avoid unnecessary headaches.
If you’re navigating trademark issues or dealing with an official mark refusal, Stratford is here to help. Contact us for expert advice tailored to your business needs.
About the Author
