Canada’s trademark regime is peculiar in more way than one, including because of the existence of a peculiar type of mark called an “Official mark”. This type of registration is a kind of super mark that CIPO may grant to public authorities, a legal concept that has evolved over time, including to curb the use of this type of mark by organizations , and even business, that do not qualify.

To make a long story short, though “public authorities” aren’t necessarily governmental entities per se, jurisprudence confirmed they must somehow qualify as such, by virtue of being controlled (controllable) by the government and having activities that benefit members of the public. Though the Trademarks Office (the “TMO”) now checks against this definition when issue public marks, it did not always do so and, as a result, our trademark is cluttered with these super marks, quite a few of which are legally invalid.

The problem is made worse by the fact the TMA does not provide a time limit for public marks, so that once granted they remain on the register indefinitely, in principle.

A new section the Trademarks Act (the “TMA”) now seeks to provide some relied as to this issue, by providing us with a section akin to Section 45 through which we may get rid of deadwood on the register, and which allows easily challenging dubious official marks. In essence, the TMA now provides that anyone may challenge a bogus official mark, by flagging it for the TMO, which may then strike it from the register if it was indeed obtain without right by the entity at issue.

Recently, CIPO published a draft practice notice that sets out how submitting such a request to cancel an official mark registration will work in practice. The procedure set forth in the practice notice would require the person objecting to a registered official mark to notify the TMO, pay fees, and provide some sort of evidence that the entity holding the official mark isn’t actually a governmental (or government-related) entity. If, after inquiring, it appears the mark is indeed anomalous, then the TMO may cancel it outright.

So, we’re finally getting a way to scrap bogus official marks that have been cluttering the register for years and years. Not a moment too soon if you ask me, especially given how broad the protection afforded by the TMA to official mark is, by protecting them automatically in any and all classes of products and services, in effect!