What is a “public authority” and why does it matter? It’s an impediment to business in Canada

Many business owners seeking to protect the name of their goods or services through Canada’s Trade-marks Act have discovered a uniquely irritating impediment that often cannot be surmounted.

Under the Trade-marks Act, there are special provisions that protect certain words or symbols, or combinations of them (sometimes referred to as “prohibited” or “official” marks). For example, one cannot use any mark that is likely to be confused with the Royal Arms, Crest or Standard, the arms or crest of any member of the Royal Family, or the standard, arms or crest of Canada’s Governor General. So far, so good.

Similarly, one cannot use the arms, crest or flag adopted and used at any time by Canada or by any province or municipal corporation in Canada if the Government of Canada or of the province or municipal corporation concerned has requested that the Registrar of Trademarks advertise of its adoption and use by the relevant government. Also good.

Symbols representing certain international organizations also cannot be used as trademarks by businesses in Canada.  These include the emblems of the United Nations, the Red Cross, the Red Crescent, Red Crystal, and the Red Lion and Sun. National flags are also out as trademarks. Understandable.

Any badge, crest, emblem, or mark adopted or used by the Canadian armed forces are also off limits. This also makes sense.

And then there is the following limitation:  any badge, crest, emblem or mark of any university or adopted and used by any public authority in Canada as an official mark for goods or services cannot be used as a trademark if the university or public authority has requested that the Registrar of Trademarks advertise of its adoption and use.

Canada’s Federal Court has explained the protection afforded a public authority [or a university] as follows:

This provision grants protection to a public authority that adopts and uses an official mark. The public authority gains exclusive use of a mark that, unlike a trade-mark, is not tied to specific wares or services. All others are prohibited from adopting a mark that so nearly resembles as likely to be mistaken for it in connection with a business. It is not necessary for the public authority to demonstrate the distinctiveness of a proposed official mark or any secondary meaning, and there is no requirement that public notice be given of a request to the Registrar.

Why is this a problem? First, “any badge, crest, emblem or mark” means that a university or public authority may select a word for its use, ask the Registrar to advertise it, and ever after no one else in Canada may use that word as a trademark for anything. Second, unlike regular trademarks, universities and public authorities do not have to associate the mark with any particular goods or services in order to have a monopoly over it nation-wide. Their rights cover any use of the mark. Third, also unlike regular trademarks, the rights of universities and public authorities to their monopoly continues even if they cease use of the mark. Regular trademarks are susceptible to expungement after three years of non-use.

It is true that, under the Trade-marks Act, a prospective business user of a mark may seek the consent of a university or public authority that has adopted and used a mark, but seeking such consent may prove costly and time-consuming. Although some universities and public authorities are quick to cooperate, others are not and, in some instances, will seek substantial payments before agreeing to provide a consent.

So, what’s a business person to do? The best course is to search the trademarks registry before selecting a trademark to ensure that the mark does consist of, or so nearly resemble as to be likely to be mistaken for, a mark prohibited under the Trade-marks Act. Doing so would be the best defence against running afoul of any official mark.