Proposed Amendments to Official Marks

A Private Members Bill, An Act to amend the Trade-marks Act (public authority), was introduced yesterday proposing changes to the Official Marks regime under the Trade-marks Act. The proposed changes include an opposition procedure and periodic renewals.

The proposed amendments to the Trade-marks Act, Bill 6-111 (Overview, Full Text) were introduced by Geoff Regan (Liberal) for first reading on June 9, 2014. The changes relate to ‘official marks’ given public notice pursuant to Section 9(1)(n)(iii) of the Trade-marks Act. The proposal includes a definition of public authority, a three month opposition period that allows an interested person to oppose the official mark and a renewal period. The proposed grounds of opposition are:

(a) the mark has not been adopted or used in Canada by the public authority;

(b) the body that requested the Registrar to give public notice is not a public authority;

(c) the mark is identical to, or so nearly resembling as to be likely to be mistaken for, a registered trade-mark whose date of registration predates the first granting of public notice in respect of the mark that is the subject of the statement of objection and may significantly undermine the ability of that trade-mark owner to fully exploit their registered trade-mark, or may result in confusion;

(d) the mark is a generic term, such that its protection as an official mark may unduly restrict the ability of traders to accurately describe their wares or services; or

(e) the granting of the official mark does not serve the public interest.

 The changes would also include a 10 year renewal deadline, which would also include a further opposition period.

Mr. Regan issued a statement regarding the Bill referring particularly to official marks and regulated professions. In 2012, he questioned Sylvain Laporte, of CIPO regarding the official marks regime. From the transcript:

Whereas in Ontario it is regulated by the provincial government, and the College of Massage Therapists of Ontario trademarked the phrases “massage therapist”, “registered massage therapist”, and “therapeutic massage”. It licensed one of the three associations in Nova Scotia—I think you see where the problem is starting to develop—and the others can’t use those words. How is it that a body that is limited provincially can obtain an official mark for a profession that applies nationally? This jurisdictional issue is very problematic, it seems to me.

How does it have the right to license an official mark to organizations in different jurisdictions who have jurisdiction over this kind of thing, over what they’re doing, over this profession? It isn’t federal. Are there any avenues for objection to an official mark or the licensing thereof across the country? I see a real problem with having given a trademark in this way that can apply nationally.

Other changes to the Trade-marks Act are pending before Parliament as part of the omnibus budget bill, C-31.