Under the Canadian Trademarks Act, there are certain marks which have a special place in the country. Canada’s official marks are a type of trademark that is protected legally for all goods and services. Unlike traditional trademarks, these official marks cannot expire and do not have to be renewed. They have special protection by the law, which does not permit any non-use cancellation against them in any circumstance.
Only designated government bodies and public authorities referred to as “Superpowers” are allowed to use these trademarks. According to the Act, only those public bodies that are serving for the common interest of the general public are qualified for using official marks which include crests, emblems, badges or similar marks.
How Are Official Marks More Protected Than Regular Trademarks?
Official marks are different from regular trademarks due to their several broad outstanding rights. Descriptive marks can also be registered as an official mark. Applications for these marks do not need to be registered for specific classes. They cover all classes of goods and services. These marks cannot expire once they are filed.
Moreover, they do not require any renewals or be cancelled for non-use and can never be expunged. Their applications are not examined to check if they are registerable or not or are confused with an already existing trademark. Any third party cannot oppose official marks and they can only be terminated if their owner voluntarily agrees to withdraw it.
Can Official Marks That Resemble Any Prior Registered Trademarks Be Filed?
Due to their special status, official marks that are similar to any prior trademark can be easily registered. They will co-exist with the existing trademarks. However, any new application filed for expansion of goods or services by those trademark owners will be blocked, even if they were registered earlier.
Another advantage of these official marks is that any new attempts of filings by its competitors will be automatically blocked. However, owners of previously existing trademarks are allowed to continue their use, but they are not eligible for any new registration.
What Happens When Official Marks Block New Trademark Applications?
If the Canadian Trademark Office finds a prior official mark resembling a new application, it is automatically blocked. The block is applicable even if the trademark is being used for entirely unrelated purposes. Applicants of new trademarks should do thorough research before filing their application. This will help them uncover any similar or identical official marks that may create a hurdle in the registration of their trademark.
How to Overcome an Application Refusal Due to Official Marks?
While registering for a trademark that is similar or identical to an official mark is not allowed without the consent of its original owner. However, trademark owners can adopt some strategies to overcome this issue. These are listed below:
- To prove that your trademark is not identical to the cited official mark, some supporting documents can be submitted to argue the case. Examiners of applications in the Canadian Trademark Office have been told to cite all trademarks similar to official marks. Therefore, if your trademark is not identical to an official mark, applicants have a chance to argue their case.
For example, if your trademark has some distinguishable features that separate it from the official mark, the examining officers can be convinced to withdraw the application block. Applicants must ensure that their trademark has some unique elements to help their case.
- Applicants can also try to obtain the consent of the official mark’s owner to help their application. Some owners may quickly oblige with your request without anything in return. However, others might need some more convincing or monetary compensation in exchange for their approval of your trademark.
- Another strategy is to take legal action in Federal Court to argue the case that the official mark owner does not have the right of ownership on legitimate grounds. In this case, you will have to prove that the owner does not constitute a public authority which is an obligatory condition to own an official mark according to the Canadian Trademarks Act. This invalidates the ownership of the official mark, and you will be able to register for it without any further obstacles. However, this option may be more expensive and time-consuming, but it can still challenge your application’s refusal.
- The applicant may also consider taking an indirect approach to persuade the official mark owner for their consent. These marks are often owned by non-governmental agencies under substantial control by the Canadian government. If this is the case, then you can contact the government agency that is funding the organization to intercede on your behalf. However, there is no guarantee that the owner will still change their decision.
- The most effective strategy perhaps is to refile your application with specific tweaks to the original trademark. Applicants may consider using some additional elements or design features which do not resemble an official mark. Creating some apparent differences amongst the trademark and the cited official mark can help you in getting your approval request processed. If not, it can give you a substantial chance in getting your case reevaluated.
The recent changes to the Canadian Trademarks Act were implemented in 2019. However, none of these changes applies to the use of an official mark under Section 9. Therefore, business owners should abide by the regulations set by the government before they choose their trademark. It is better to consult with a trademark professional to help you in designing your trademark and avoid any future obstacles in its approval.