We Canadians have an unusual form of IP protection that you may not have heard about. No, it is not a special form of patent for our hockey players, though someone once asked me if they might be protected by a geographical indication.
Have you ever heard of an Official Mark? No? Are you sitting down?
An Official Mark is an extra-ordinary type of trade-mark protection reserved for public authorities: government bodies, crown agencies, public utilities, universities, colleges and any other party who can meet the two-fold test of governmental control and public benefit. Sorry, these are reserved for Canadian public authorities. Just ask the US Postal Service who were enjoyed public authority status until the Federal Court of Canada decided otherwise in 2005.
So what is so special about Official Marks? Let me give you a list.
1) The Canadian TM Office processes Official Mark requests in roughly half the time it takes to deal with a trade-mark application.
2) Official marks exist without term, unlike trade-marks which, in Canada, must be renewed every 15 years.
No big deal?
3) Official Marks are not limited by prohibitions against descriptiveness or confusion with other marks. If a provincial government, decides it wants to give public notice that it has adopted the word BAKERY as an Official Mark, it has the statutory authority to do so. All those prohibitions in section 12 of our Act? None of them apply.
Did that get your attention? How about this:
4) Prior registrations do not pose an obstacle to Official Marks. If a public authority wishes to adopt a mark someone has already registered, say ODDBALL TOOLS, then it may do so. A trade-mark registration for ODDBALL TOOLS has absolutely no bearing on a request for an Official Mark. Not only that, the Official Mark will put a brand new fence around ODDBALL TOOLS that was not there before. ODDBALL TOOLS may still be used by its owner, but not for any new uses. So, sorry ODDBALL TOOLS owner, but no, you can’t use your mark with that new product line.
And here’s a kicker:
5) Unlike ordinary registered trade-marks, there is no opportunity for ‘opposition’. Yes, you heard me right. There is no provision for third parties to object. Period. Your client was already using ODDBALL TOOLS? Too bad. There is this small crumb: pre-existing uses may continue.
6) What if your client wants to appeal the granting of an Official Mark? Good luck. Official Marks are virtually unassailable. There is no provision for the appeal in the Act. Oh, judicial review of a decision made by the Registrar may be available, but the grounds are extremely limited.
Baffling, no? This might be classified as one of those laws “in support of public order” that we love so well here in the Great White North. Welcome to Canada, where we believe in peace, order and good government (except when one of our hockey teams blows the Stanley Cup) and extraordinary trade-mark rights for public authorities.