Reshika Dhir is a first year law student at Osgoode Hall and is taking the Legal Values: Challenges in Intellectual Property course.
A Trademark is any logo, word, symbol, name, phrase, image or a combination of these elements that makes an individual and company wares and/or services distinctive. On one hand, the producers/providers of wares or services can legally protect their company identity, guarantee a legal title to their Intellectual Property, and ensure that it is them who reap the benefits of the financial and reputation related awards, and not an imitating competitor. Likewise, on the other hand, consumers are empowered with a tool to differentiate between competing products, and to reduce their costs of shopping and making purchasing decisions.
The section 9 of the Trademarks Act (the Act) consists of a wide variety of ‘prohibited marks’, such as flag, official sign or hallmark, armorial bearing, abbreviation of name, emblem, arms or crest etc. While the overall purpose of the section is to prevent people from ‘cashing in’ on the prestige and authority of these established marks, there is nevertheless a subsection, s.9(1)(n)(iii) that provides ambiguous protection to “public authorities,” whose potential exploitation goes contrary to the rationale of s.9 and the Act. These marks, called official marks, are a unique feature of Canadian Trademarks law.
Unlike other provisions under the Act, the family of ‘official marks’ has several advantages: no substantive examination process, less formal registration procedure, no opposition proceeding, potential unlimited duration and a wide coverage of all products and services. Teresa Scassa, in ‘Nickled and Dimed: The Dispute over Intellectual Property Rights in the Bluenose II,’ delineates the concept of ‘IP Gold Rush’ in association with the regime of Intellectual Property in general, and ‘official marks’ in particular. She indicates that the emerging significant commercial value of IP has compelled people to claim IP over such things where no rights are likely to exist. Given the tremendous advantages of the official marks, the trend has been for people to claim rights over public domain territory, transforming aspects of general culture into private party’s revenue stream.
Over the last few years, common law has provided some significant developments on the ‘official marks’ frontier. To apply for these special marks, a body needs to be a ‘public authority,’ the qualification for which was uncertain for the longest time. Currently, as highlighted in Practice Notice issued by Canadian Intellectual Property Office, two main factors ought to be analyzed: public benefit and governmental control.
Owing to the absence of any explicit purpose of this subsection, one can only assume what the ‘official marks’ are required to achieve. If one were to assume that this was a tool to encourage individuals or companies to promote public benefit efforts, the case law rejects this notion. Instead, the public benefit criterion takes a backseat in the ‘public authority’ analysis. Consequently, various charitable organizations, volunteer groups and religious organizations that aim to achieve public welfare, protection of the symbols of their identity (Canadian Jewish Congress v. Chosen People Ministries, Inc.) or maintenance and renovation of entities for educational and historical purposes (Bluenose II) are not guaranteed an ‘official mark’ unless the government control test is met.
Over time, the government control factor has evolved to include the following: subject to control within Canada and by a Canadian government (Canada Post Corp. v. United States Postal Service), ongoing government supervision of activities (ON Assn. of Architects v. Assn. of Architectural Technologies of ON), ongoing government influence in the body’s governance and decision-making and participation of government members on the body’s operating committees (Sullivan Entertainment Inc. v. Anne of Green Gables Licensing Authority Inc.). It is also established that mere government funding, statutory incorporation or unilateral and exclusive legislative amendments are not sufficient to pass this requirement. While the list is not exhaustive, the factor is nevertheless determinative.
With the conclusion that public benefit is not a key element, and the government control test is the all-deciding factor, one is compelled to wonder if there is an ulterior motive, or a mischief, that ‘official marks’ is set out to achieve. Is the actual purpose to promote government intervention while discouraging privatization? Is the dual requirement of public benefit and government control aimed at bringing religious organizations, forming a major part of charitable institutions, within government supervision and influence? While these are mere speculations, the uncertainty in the overall benefits gained from ‘official marks’ elevate these speculations to persuasive assertions. Required next then, in order to shape this unique domain of marks, are significant legislative amendments to offer greater transparency.