Official Marks in Canada are trademarks that are used and adopted by a public authority under government control. A public authority has been described as an entity that is subject to government control and engages in activities that benefit the public (United States Postal Service v. Canada Post Corporation, 2007 FCA 10).
Trademarks Act, Section 9(1)(n) any badge, crest, emblem or mark:
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(i) adopted or used by any of Her Majesty’s Forces as defined in the National Defence Act,
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(ii) of any university, or
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(iii) adopted and used by any public authority, in Canada as an official mark for goods or services,
Private associations, charities, and commercial entities are not eligible for trademarks under section 9(1)(n)(iii) of the Trademarks Act.
Applications for an official mark escape the usual scrutiny of the trademark examination process by the Registrar of Trademarks. Various government entities can adopt and use official marks that are confusing with other trademarks and even other official marks.
For an official mark to be valid, a public authority must have both adopted and used the mark as of the date the Registrar of Trademark publishes an advertisement of the official mark in the Trademarks Journal in connection with some goods or services. The public authority adopting the trademark should document such use as it will be necessary to prove use, if their trademark is challenged in Federal Court.
If the public authority failed to use the official mark in connection with any goods or services, as of the publication date, then it is invalid. See the decision in City of Terrace and Kitasoo Band Council v. Urban Distilleries Inc., 2014 FC 833 (F.C.), Martineau J., September 2, 2014 – the Spirit Bear case. The Federal Court of Canada invalidated the Spirit Bear section 9(1)(n)(iii) marks because Justice Martineau found that neither the City of Terrace, nor the Kitasoo Band Council, had used and adopted the Spirit Bear trademark in connection with any particular goods or services. The City of Terrace merely listed Spirit Bear and other trademarks at the bottom of its official letterhead.
Public authorities may license the use of their Official Marks Canada. The City of Terrace licensed use of the Spirit Bear trademark with respect to various entities goods and services, but such licensed use alone was not good enough to uphold the validity of their official mark.