Changes to Canadian Trademark Law: there's good news and bad news


Victoria Carrington

Where shall we start? Perhaps with the good news. Canada’s trademark legislation has a peculiar creature known as an official mark.

Official marks enjoy special status in Canada in that once they are “adopted” by “public authorities” and notice of such adoption and use is given by the Registrar, no other person can adopt in connection with a business, as a trademark or otherwise, any mark that is identical to or resembles an official mark, unless the public authority consents.

The monopoly afforded official marks is quite substantial (some would say heavy-handed) as there is no examination or opposition process and, unlike the confusion test, the field of use and other surrounding circumstances are largely irrelevant to the resemblance analysis. It is also difficult to invalidate official marks or an entity’s public authority status—judicial review proceedings in federal court are, typically, required.

These provisions effectively prevent traders from adopting certain marks, expanding the use of their existing marks or registering trademarks based on previous common law usage, if they correspond to or “so nearly resemble as to be likely to be mistaken for” an official mark, even if the public authority adopted its mark in association with completely unrelated activities or goods/services.

Canadian Trademark Law; trademark registrations; trademark squatters; Madrid Protocol.