Canada’s anomalous and downright dysfunctional official marks system is once again deserving of attention as the Rio Olympics unfold. The protection of Olympic marks in Canada reveals many of the deficiencies of this system.
Under the Trade-marks Act, “public authorities” in Canada can sidestep the whole process for application, review and registration of trademarks by simply asking the Registrar of Trade-marks to advertise whatever logo or word mark they have come up with for whatever undertaking they are engaged with. This includes the names and/or logos of government departments (eg: Heritage Canada & Design), the names and/or logos of municipalities (City of Windsor & Design) or even the names of publicly-funded institutions such as the National Gallery of Canada. At the other end of the spectrum are the myriad logos, slogans and words associated with government activities that are largely run as businesses, such as lotteries and casinos. Official marks are available to any ‘public authority’ and the meaning of this term has not always been clear. In the last 15 years or so the courts have tightened up the definition of a “public authority”, but nonetheless the register is crowded with official marks held by entities that were never entitled to hold them. These illegitimate official marks will remain protected unless someone spends their hard earned money to challenge them in court. This is just one of the ways in which the official marks regime is deeply flawed. The marks never expire; there is nothing in the Act that prevents them from being identical to or confusing with trademarks in which registered trademark owners may have invested a great deal of resources; and none of the limitations on the registrability of trademarks apply. There is also no mechanism (short of going to court) by which a mark can be removed from the Register by anyone other than the public authority once it is advertised. The Register is crowded with obsolete official marks. These marks stand in the way of new trademark registrations.
The Canadian Olympic Committee (COC) has long relied upon official marks to protect hundreds of marks relating to current and past Olympic Games and activities. Yet this protection was not enough for the IOC. In 2007, Canada enacted the Olympic and Paralympic Marks Act (OPMA) to fulfill a commitment made to the IOC in Vancouver’s bid for the 2010 Winter Olympics. Controversially, the OPMA added a new protection against ambush-marketing, and I have written about this aspect of the legislation elsewhere. But it also created a list of protected Olympics-related marks in Schedule 1. These marks are protected for as long as they remain on the Schedule. They include 39 basic Olympic and Paralympic related marks and logos. Further, the federal government can, by regulation, add new marks to the list whenever there is a need to do so. The OPMA also created a second schedule for the protection of Olympic marks related specifically to Games hosted by Canada. These marks would be protected only for the period of time set out in that schedule. In other words, they were limited to the period directly before and after the hosted event. There was no schedule for marks related to Olympic Games that were not hosted by Canada, such as the Rio Olympics.
In spite of this special legislation for Olympic-related marks, the COC still relies upon the official marks provisions of the Trade-marks Act to protect Olympics-related marks. Some of the marks found in Schedule 1 of the OPMA are also official marks under the Trade-marks Act (see, for example: FASTER HIGHER STRONGER, OLYMPIAD, OLYMPIC GAMES and OLYMPICS). This means that even if the federal government decided to remove these marks from this Schedule, they would still receive protection under the Trade-marks Act. The situation was much worse prior to 2014, when the COC (finally) withdrew from the Register of Trade-marks many of its official marks that also appeared in Schedules 1 and 2 of the OPMA, thus limiting the impact of the double-protection. Of course, this double protection endured for 7 years before being rectified, and it has not been completely corrected. Further, it was done purely voluntarily. Nothing in Canadian law prevents the COC from asking the Registrar of Trade-marks to advertise the same marks again as official marks. The legislative dysfunction is also evidenced by the surfeit of Olympic marks that are still protected as official marks including, for example, WINTER OLYMPIC GAMES, SUMMER OLYMPIC GAMES, OLYMPIC FLAME, OLYMPIC TORCH, and the list goes on. In addition, there is a pile of Olympic clutter on the Register, including marks and logos from past Olympiads such as the ones in Lake Placid, Calgary, Torino, Seoul – you get the picture.
For the Rio Games, the Canadian Olympic Committee has chosen to use the Trade-marks Act to protect two Rio-specific marks as official marks: Rio 2016, and Rio 2016 & Rings Design. Anyone who, misled by the title of the Olympics and Paralympics Marks Act, checked that statute to see what Olympic marks were protected and which ones were not, could be forgiven for missing those two – but forgiven they will not be if they use either of the marks.
There really are two issues here that need to be addressed. The first is that the federal government must do something about the hugely problematic category of official marks. That the official marks regime is dysfunctional is a well-known fact. The federal Liberals surely know this; when they were in opposition, MP Geoff Regan brought forward a private member’s bill to address the regime’s deficiencies.
The other problem is that the government has put in place two different regimes that can be used simultaneously to protect Olympic and Paralympic marks, and the (limited) checks and balances in one are not reflected in the other. The result is a mess of, well, Olympic proportions.