Section 9 Trade-Marks
Public Authorities in Canada gain special rights and provisions for trade-marks used in conjunction with their public actions, services, and wares. So long as a “public authority” is controlled by a Canadian Government (municipalities, provincial legislatures, etc.) and its function is for public benefit, any trade-mark which it uses (an “official mark”) can be protected by section 9(1)(n)(iii) of the Trade-marks Act.
Section 9 confers a very easy, and very strong protection to “official marks”. Some advantages include:
- No need for wares and services to be identified (the marks are protected for all uses)
- Not subject to regular examination (no confusion/descriptive analysis)
- Relaxed use and adoption rules (generally public display is sufficient)
- No opposition or section 45 cancellation possible
- No renewal necessary
Examples of section 9 marks include: Canadian Coat of Arms, RCMP, any national flag, the Red Cross symbol, university crests, provincial museum slogans, and provincial tourism advertisements.
On the other side of the coin, these marks can be troublesome for applicants who are attempting to register their own trade-marks. Due to the strong protection of these marks, there is no recourse to standard trade-mark procedures for an applicant to prosecute their trade-mark application. An applicant must either seek consent of the public authority or attempt to challenge the authority of the public body to have registered these marks. This can be a costly and lengthy process. Thankfully, however, the registration of a Section 9 mark is only prospective – that is, a public authority should not be able to challenge the existing rights of a legitimate trade-mark owner who was using the now official mark as a trade-mark for certain wares and services prior to the notice provisions in Section 9.
If you have further questions about official marks or trade-marks in general, contact me today.