Official Marks are marks adopted by Public Authorities in Canada, such as universities, governmental entities, royalty, and other entities sponsored or funded, at least partially, by the Canadian government.

As Official Marks are not trademarks, in that they do not identify origin of goods and services but rather identify goods and services, meeting the standards of the Public Authority, they are not subject to the same standards of registrability as trademarks under the Trade-marks Act (the Act) such as descriptiveness and non-distinctiveness and, once notice of their adoption is published by the Registrar, the Public Authority can prevent a third party from using or registering the Official Mark, or a confusingly similar mark, for any goods or services in connection with which the third party had not previously been using the mark.

Examples of Official Marks are “Stock Market Place at the TSE” of the Toronto Stock Exchange, the Canadian Flag Symbol, the Canadian Olympic Symbols, and Anne of Green Gables by the Anne of Green Gables Licensing Authority.

The Federal Court of Canada has held that Official Marks are not invulnerable, as some believed, in that they can be declared by a Court to be ineffective even though the Act does not contain any provisions for annulling the effect of these marks once notice of their adoption by a Public Authority has been published by the Registrar.

In FileNET Corporation (Applicant) v. The Registrar of Trade-Marks (Respondent) , Applicant, licensee of the registered trademark FILENET in respect of “computer hardware, software and peripherals; automated office systems for the storage retrieval, handling and processing of business documents”, filed an application for judicial review seeking a declaration that the decision of the Registrar to publish notice of the adoption by Respondent of an Official Mark for NETFILE & Design was unlawful and invalid, and that such published notice should be quashed.

Applicant simultaneously filed an appeal from the Registrar’s decision to give public notice of the adoption of the mark since Respondent had not adopted and used the mark in association with its services, namely, enabling the electronic filing of tax returns, prior to submitting its request for publication to the Registrar, so that the mark was not an “actual mark” and was merely a “proposed mark”.

The first question before the Court was whether the application for judicial review or the separate appeal were the proper means of addressing the issue of publication of notice of the adoption of an Official Mark. The Court found that Applicant did not have standing to bring an appeal against the Registrar’s decision as it was not originally a party to the Registrar’s decision.

However, the Court held that Applicant did have standing to bring an action for judicial review. Under the Federal Court Act, anyone directly affected by a matter may apply for relief by judicial review and Applicant successfully argued that it would be directly affected by the decision to publish notice of the Official Mark since, while Applicant could continue to use its mark in connection with the services on which it had been using the mark prior to publication of notice of the Official Mark, it could not expand use of its mark after publication.

The next, and most important, question before the Court was whether the validity of the notice of adoption of the Official Mark was dependent on the mark having been adopted and used by the Public Authority prior to publication of notice by the Registrar. On this issue the Court found that, even though Official Marks appear to be invulnerable as there are no provisions for their invalidation in the Act, case law has established that a Court may declare that Official Marks are incapable of giving rise to any rights or prohibitions and, if a conflict arises between a trademark and an Official Mark, the burden is on the Public Authority to prove that it adopted and used the mark prior to the publication of notice of adoption by the Registrar.

In this case, the Public Authority had advertised the mark on its website prior to the publication of notice of the Official Mark, which was sufficient to show that it had adopted and used the mark prior to the publication. The Court analogized to Official Marks adopted for the Olympic Games, in which the marks are considered adopted and used before the Games commence. On this basis, the Court dismissed the application for judicial review.

This decision is important in that it establishes that Official Marks are not invulnerable, but may be challenged by way of judicial review by those with standing to do so