A recent decision of the Federal Court highlights the need for reform to the official marks regime under the Trade-marks Act.
As discussed in an earlier blog post, official marks are a kind of ‘super trade-mark’ available to ‘public authorities’ in Canada. A public authority has been interpreted by the courts as an entity that is under government control and that acts for the public benefit. Official marks are not subject to the rigors of regular applications to register trademarks – there is no examination, no opposition proceeding and no need for the public authority to avoid choosing a mark that may be confusing with an already registered trademark. Once the Registrar gives notice of an official mark, it is protected almost in perpetuity – there is no need to renew such a mark, and there is no administrative process by which unused official marks can be removed. Official marks, even if long unused, therefore, remain a barrier to the registration of regular trademarks, since the adoption, use or registration of a mark “so nearly resembling as to be likely to be mistaken for” an official mark is prohibited.
This was the difficulty faced by the applicant in TCC Holdings Inc. v. Families as Support Teams Society. TCC Holdings sought judicial review of a 1996 decision of the Registrar to give public notice of the mark FAST. The request for public notice of the adoption of this mark came from a registered charity. In 2003, the Federal Court of Appeal confirmed that charitable status was not sufficient to make an organization a ‘public authority’ within the meaning of the Act. Thus, registered charities are not entitled to hold official marks and must apply for trademarks in the usual way. However, since the Trade-marks Act provides for no mechanism to remove official marks, the FAST mark remained on the register of trademarks. To make matters worse, the entity that held this official mark had its charitable status revoked in 2006, and was dissolved in 2007. The mark FAST nonetheless remained on the register. Its presence proved a barrier to TCC Holdings, which had applied in 2011 to register the trademark FAST, and was told that its application was barred due to the presence of the official mark.
TCC Holdings was successful in its application for judicial review to have the official mark removed from the register. Ultimately, however, in order to register its mark, it was subject to delays and to the added expense of an application for judicial review to the Federal Court. None of this should be necessary – the official marks regime is broken, and is very much in need of repair.
In the last session of Parliament, a Private Members Bill (Bill C-611) was introduced by Liberal MP Geoff Regan with a view to reforming the official marks provisions of the Trade-marks Act. The Bill was not considered before the session ended, and it is hoped it will receive due attention. Among other things, the bill proposes a 10 year term of protection for official marks. This term may be renewed, but in cases where the mark has ceased to be used, it will fall off the register, clearing the way for trademark registrations. As the TCC Holdings Inc. case shows, reform of this kind is still sorely needed.
