In addition to its more substantive changes to IP law, budget implementation Bill C-86 also takes the opportunity to fix a curious, and perhaps unintended, aspect of Canada’s official marks scheme.
Official marks are marks that appear on the trademark register once they are adopted by a public authority. Unlike trademarks, which are subject to expungement for non-use, there are few bases on which an official mark can be removed from the trademark register once public notice of adoption has been given.
One particularly problematic issue is that official marks persist on the register even if a public authority has ceased to operate, which can permanently lock up a trademark from use or registration by any entities.
Bill C-86 proposes a targeted fix to this issue in both operative portions of the official marks scheme: ss. 9 and 11.
In respect of s. 9, which prohibits the adoption of any official mark, C-86 would clarify that the prohibition does not apply if the entity who gave notice “is not a public authority or no longer exists.” It also provides for removal of such marks from the register by the registrar on its initiative or upon request.
In respect of s. 11, which prohibits use of official marks, and is the legal basis for infringement claims, C-86 would explicitly permit the use of a mark by a third party on the same basis, eliminating any risk of a claim for official mark infringement in such circumstances.
While nobody could complain that official marks are released when a public authority ceases to exist, it will be interesting to see if any enterprising litigants seek to argue that an entity that was previously a “public authority” has ceased to be one as a result of a change in the control or influence. Does an entity cease to be a public authority if the composition of the board is altered? What if public funding is fully withdrawn?
Either way, the changes to the official mark regime are more administrative than anything, cleaning around the edges rather than undertaking a wholesale revision. Love them or hate them official marks are here to stay—at least for now.