Too Much Protection, Too Little Gain: How Official Marks Undermine the Legitimacy of Intellectual Property Law
| Author | Donna L. Davis |
| Position | B.A. Hons. (Memorial), M.A. (Carleton), LL.B. Dalhousie 2010 (expected) |
| Pages | 1-16 |
ARTICLE
TOO MUCH PROTECTION,
TOO LITTLE GAIN:
HOW OFFICIAL MARKS UNDERMINE
THE LEGITIMACY OF INTELLECTUAL
PROPERTY LAW
By Donna L. Davis*
CITED: (2009) 14 Appeal 1-16
I. INTRODUCTION
For decades, courts have defended and public authorities have delighted in the extraordi-
nary protection provided by ocial marks. is uniquely Canadian creation1is protected
under s. ()(n)(iii) of the Trade-marks Act,2although it is not a trade-mark, nor is it sub-
ject to the same rigorous standards of registrability as a trade-mark. Ocial marks can
comprise common words such as “doctor,” “nurse,” “engineer,” and “chartered nancial
planner”3as well as common phrases such as “Today’s special,” “Open your ears,” and “Give
yourself credit.”4Anything and everything is up for consideration, provided it is neither ob-
APPEAL VOLUME 14 w1
1Canada Post Corporation v. United States Postal Service, 2005 FC 1630, 47 C.P.R. (4th) 177 at para. 30
(F.C.T.D.), aff’d 2007 FCA 10, 54 C.P.R. (4th) 121, leave to appeal refused [2007] S.C.C.A. No. 117 (QL) [USPS
2005].
2 R.S.C. 1985, c. T-13.
3 Official marks owned by the Canadian Medical Association, Canadian Nurses Association, Canadian Council of
Professional Engineers, and Canadian Institute of Financial Planning respectively (Canadian Trade-marks Data-
base, online: Canadian Intellectual Property Office
Search.do?language=eng> [Canadian Intellectual Property Office]).
While associations may register these designations to prevent misuse of them by those lacking the necessary
qualifications, other mechanisms can and do achieve this end without granting such a broad right. The practical
effect of this is a secondary system of regulation wielded by the associations. Other means of preventing false
advertising by unqualified “professionals” are available. For example, s 33 of Ontario’s Regulated Health Pro-
fessions Act, 1991, prevents misuse of the title “doctor” (Kelly Gill & R. Scott Jolliffe, Fox on Canadian Law of
Trade-marks and Unfair Competition, 4th ed. (Toronto: Carswell, 2007) at 5-62 [Gill & Joliffe]).
4 Official marks owned by the Ontario Educational Communications Authority (Canadian Trade-marks Database,
supra note 3).
* Donna Davis, B.A. Hons. (Memorial), M.A. (Carleton), LL.B. Dalhousie 2010 (expected). Donna would like to
thank Dr. Teresa Scassa, Faculty of Law, University of Ottawa as well as Professor Robert Currie and Dr. Chidi
Oguamanam, Dalhousie Law School, for assistance and comments on an earlier version of this paper.
scene nor contrary to public order.5Ocial marks are exclusive to public authorities and,
once secured, they are “virtually unexpungeable.”6
In recent years, however, the federal courts in particular have cast a less accepting, more
critical eye on the ways in which public authorities have been using these “super marks.”7
Parliament’s original purpose in draing s. ()(n)(iii) was to remove coats of arms, crests,
and royal symbology from the eld of trade to protect them from businesses that would ex-
ploit the marks to add respectability and cachet to their own wares and services.8e pro-
vision fulls in part Canada’s obligations under the Paris Conventi on to protect armorial
bearings, ags, and other emblems from misuse;9in fact, it exceeds those obligations as
well as the protections of comparable jurisdictions. is is the root of the problem that has
attracted the attention and the active intervention of the Federal Court of Canada.
is paper will argue that ocial marks protections are overbroad. As public authorities be-
come more deeply engaged in commercial activity, they are using their ocial marks as
trade-marks, and this gives them a tremendous advantage over other commercial actors.
Public authorities can not only freeze another party’s rights to a long-standing and poten-
tially valuable mark, they can also prevent all commercial use of the mark in future by any-
one without permission. e statute allows these actions, and up until recently there has
been little one could do about it.10
Granting this extraordinary privilege to public authorities places a burden on commercial
actors, professionals and ultimately the public, who receive little reciprocal benet. e ex-
change that lies at the heart of justications for intellectual property—the granting of ex-
clusive rights as an incentive to create intellectual products11—does not pertain to ocial
marks. Exclusive rights were given to ocial marks not to encourage productivity but to
identify a public institution or authority and to prevent others from trading on that au-
thority.
Public condence in government and respect for the laws it builds around intellectual prop-
erty are adversely aected when decient legislation remains uncorrected and illegitimate ex-
ercise of statutory power goes unchecked. is is evident in the public response to the recent
dispute between the Royal Canadian Mint and the City of Toronto in which the mint charged
Toronto , for unauthorized use of the phrase “one cent” and the image of the Canadian
penny in the city’s “One Cent Now” campaign. e dispute sparked a public debate grounded
in important normative questions about what should and should not be owned, the legitimacy
of intellectual property law, and the ability of government to govern eciently and wisely.
5Mihaljevic v. British Columbia, [1988] F.C.J. No. 738 (T.D.) (QL) [Mihaljevic].
6 Roger T. Hughes, Hughes on Trade Mark(Markham, Ont.: LexisNexis Canada, 2005) at 640 [Hughes].
7 See Arnold Ceballos, “Who is a ‘public authority’ and entitled to official marks benefits?” The Lawyers Weekly
(21 April 2006) (QL); Sander Gelsing, “Now Why Didn’t I Think of That?—A Canadian patent, trade-mark and
copyright blog.” Posted 9 May 2006, online: .
8Techniquip Ltd. v. Canadian Olympic Assn.,[1998] F.C.J. No. 280 at para. 28 (T.D.) (QL) [Techniquip].
9Paris Convention for the Protection of Industrial Property, 20 March 1883, 21 U.S.T. 1583, 828 U.N.T.S. 305,
art.6ter, (entered into force 26 April 1970, accession by Canada 26 March 1970), online: World Intellectual
Property Organization .
10 Although it is beyond the scope of this paper, it is notable that official marks have been used to extend copy-
right, as was the case in Anne of Green Gables Licensing Authority Inc. v. Avonlea Traditions Inc.,[2000] O.J.
No. 740 (Sup. Ct.).
11 Edwin C. Hettinger, “Justifying Intellectual Property” (1987) 18 Philosophy & Public Affairs 31 at para. 53.
2wAPPEAL VOLUME 14
Legal practitioners and scholars have argued for years that s. ()(n)(iii) is ripe for reform.12
Parliament has remained unresponsive, but the Federal Court has not. Its recent jurispru-
dence has narrowed s. ()(n)(iii) protections and taken some of the sting out of what had
been, for years, a statutorily sanctioned monopoly. is reining in of s. ()(n)(iii) is needed
to restore legitimacy to intellectual property law.
In this paper I will discuss the protection aorded under s. ()(n)(iii) and the ways in
which the Federal Court has addressed the deciencies in the statute by narrowing the
scope of ocial marks protection. I will also argue that this reinterpretation is an essential
step toward addressing the injustices and the legitimacy problems evident in disputes like
“One Cent Now,” where ocial marks are put to commercial use.
II. THE NUTS AND BOLTS OF OFFICIAL MARKS
A. Defining and Obtaining Official Marks
Section ()(n)(iii) of the Trade-marks Act states:
.()No person shall adopt in connection with a business, as a trade-mark or
otherwise, any mark consisting of, or so nearly resembling as to be likely
to be mistaken for, …
(n) any badge, crest, emblem or mark …
(iii) adopted and used by any public authority, in Canada as an ocial mark
for wares or services, in respect of which the Registrar has, at the request
of Her Majesty or of the university or public authority as the case may be,
given public notice of its adoption and use ….13
Ocial marks dier from trade-marks in a number of important ways, and the eect is
that, in nearly all instances, ocial marks provide superior protection. Unlike a trade-mark,
an ocial mark is permitted to be both descriptive and confusing with another mark. It can
be obtained with greater ease and speed than a trade-mark, and the securing of an ocial
mark prohibits others from using the mark for all wares and services and not just the lim-
ited wares and services used by the public authority.14 Section of the Trade-marks Act
prohibits the adoption, and s. prohibits the use, of ocial marks for commercial purposes
without the consent of the public authority. e Trade-marks Act makes no provision for
revoking an ocial mark. Its term is unlimited and there are no renewal fees.15
Parties seeking an ocial mark must make a request to the Registrar of Trade-marks. e
public need not be notied of the request. If the requestor meets the statutory require-
ments set down in s. ()(n)(iii), the registrar must give public notice of the ocial mark
12 For example, see Gordon F. Henderson, Intellectual Property: Litigation, Legislation, and Education(Ottawa:
Minister of Supply and Services Canada, 1991) at 52; A. David Morrow, “Official Marks” in Gordon F. Hender-
son, ed., Trade-marks Law of Canada (Toronto: Carswell, 1993) 377 at 382-89; Gill & Jolliffe, supra note 3 at
5-61; Teresa Scassa, “Nickled and Dimed: The Dispute Over Intellectual Property Rights in the Bluenose II”
(2004) 27 Dal. L.J. 293 [Scassa]; Colin P. McDonald, “Official Marks: Are There Any Limits to This Branding
Power?” (2003) 17 I.P.J. 83 at 88-89 [McDonald].
13 Trade-marks Act, supra note 2 at s. 9.
14 Ontario Association of Architects v. Association of Architectural Technologists of Ontario, 2002 FCA 218, 19
C.P.R. (4th) 417 at para. 34; rev’g [2000] F.C.J. No. 1743(F.C.T.D.) (QL) [Ontario Architects].
15 Scassa, supra note 12 at 301.
APPEAL VOLUME 14 w3
by having it published or “advertised” in the Trade-marks Journal. e registrar has no dis-
cretion to refuse to give public notice of the ocial mark unless the mark is obscene or
contrary to public order.16It is usually that simple. However, this simple process gives rise
to eects that compel scrutiny for myriad reasons.
B. Freezing Rights
Section ()(n)(iii) prohibits the adoption for commercial purposes of “any mark consist-
ing of, or so nearly resembling as to be likely to be mistaken for” an ocial mark.17 e pro-
hibition operates prospectively rather than retrospectively,18 but its eect is nonetheless
especially signicant for two user groups: prospective users, who wish to adopt that mark
or a confusingly similar one but who have not yet done so, and current users, who have al-
ready adopted the mark and who are using it at the time that public notice is given.
Prospective users typically never get past the gate. Once the Registrar of Trade-marks gives
public notice of an ocial mark, no one may adopt that ocial mark in relation to any
wares or services without the consent of the public authority whose exclusive rights to the
mark trump all other rights.
e situation is only slightly better for current users. Parties that have registered the mark
or a similar one prior to public notice can continue their use, but they cannot extend that
use to the marketing of a new and dierent product developed aer public notice.19It is im-
material that a party may have been the rst to adopt the mark and may have used it to
build up decades of good will. Parties that have adopted the mark as a common law mark
also can continue to use it, subject to the same limitations. However, pursuant to s. ()(e)
of the Trade-marks Act, it remains “forever unregistrable.”20In both scenarios, the rights of
the current user are frozen by the ocial mark.
Dangling between these two extremes is the party whose trade-mark application is pend-
ing. is party shares the same fate as the prospective user. Applications that are not dis-
posed of by the Oce of the Registrar prior to notice of the ocial mark will be rejected.
e potential for unfairness is obvious. e Oce of the Registrar can process the simpler
ocial marks request with greater speed than the more rigorous trade-marks application,21
which means that the former is likely to be operational more quickly. e problem for reg-
istered trade-mark applicants can be exacerbated by a backlog within the Oce of the Reg-
istrar.
16 Mihaljevic, supra note 5. Consideration of public order, a broad concept, gives some scope for the registrar to
exercise a discretion not expressly afforded by the statute. The principle of public order may be used to narrow
the protections provided to public authorities under s. 9(1)(n)(iii). See discussion of public order below.
17 Pursuant to s. 9(2), the public authority can consent to the “adoption, use or registration” of their official mark
by another party, but they need not consent.
18 Canadian Olympic Assn. v. Allied Corp., [1990] 1 F.C. 769 at para. 14 (F.C.A.) (QL).
19 Magnotta Winery Corporation v. Vintners Quality Alliance, 2001 FCT 1421, F.C.J. No. 1941 at para. 28 (QL);
Royal Roads University v. Canada, 2003 FC 922 at para. 16 [Royal Roads]; Ontario Architects, supra note 14
at para. 34.
20 Canadian Council of Professional Engineers v. APA—EngineeredWood Assn., [2000] F.C.J. No. 1027 at para.
67 (T.D.) (QL) [Canadian Council of Professional Engineers].
21 Jason Hannibal, “Official marks harder to obtain, easier to challenge” (26 September 2003) The Lawyers
Weekly (QL) [Hannibal]. The writer’s own unscientific review of the dates listed in the Canadian Intellectual
Property Office’s trade-marks database, supranote 3, shows that, in late 2006, the Office of the Registrar took
10-11 months to register a trade-mark and only two months to advertise an official mark.
4wAPPEAL VOLUME 14
When is a mark likely to be mistaken for an ocial mark? In comparing the marks, courts
forego the test of straight comparison22 and use instead the test of resemblance. is test
asks whether a person knowing only Mark A and having an imperfect recollection of it
would mistake a second mark (B) for A or be confused or deceived.23 e test of resem-
blance increases the likelihood that confusion will be found and that the ocial mark will
prevail. Likelihood that one will be mistaken for the other is what matters. e parties’
wares or services “may be completely dierent, sold to completely dierent consumers, in
completely dierent settings, through a completely dierent marketing and distribution
system,” but that is irrelevant.24 e too-similar mark will not withstand the power of the
ocial mark.25
C. Privilege Reserved for “Public Authorities”
Only a public authority can obtain an ocial mark, and the registrar requires evidence of
public authority status with every request.26 e Trade-marks Act does not dene “public
authority.” However, in Ontario Association of Architects v. Association of Architectural Tech-
nologists of Ontario in (“Ontario Architects”), the Federal Court of Appeal adopted a
two-step test for evaluating public authority status: rst, government must exercise a sig-
nicant degree of control over the activities of the body; and, second, the activities of the
body must benet the public.27
1) Governmental Control
In assessing the necessary measure of governmental control, the registrar must be satised
that government is enabled, “directly or through its nominees, to exercise a degree of on-
going inuence in the body’s governance and decision-making.”28 Indications of sucient
control include enabling legislation that confers on the minister power to review the body’s
activities, to request the body to undertake activities that the minister considers relevant
to implementing the intent of the Trade-marks Act, and to advise the body on executing the
statutory scheme. e enabling legislation might also confer on the Lieutenant Governor
in Council power to approve the regulation-making power of the body and to appoint
members to the body’s committees.29
e fact that a body is created by a statute, which the enabling legislature may amend uni-
22 The test of straight comparison subjects the marks to a careful side-by-side examination (Techniquip, supra
note 8 at para. 12; Gill & Jolliffe, supra note 3 at 5-56).
23 Hughes, supra note 6 at 640.
24 Canadian Council of Professional Engineers, supra note 20 at para. 68.
25 It has been suggested that the Federal Court in Techniquip, supra note 8, applied the “resemblance” test in a
way that broadened the test by expanding the scope of evidence that could be considered under the test (Mc-
Donald, supra note 12 at 88). However, the same court seems to have retreated somewhat from that decision
in Canadian Council of Professional Engineers, supra note 20 at para. 68.
26 Stadium Corporation of Ontario Ltd. v. Wagon-WheelConcessions Ltd. (T.D.), [1989] 3 F.C. 132 at para. 18
(T.D.) (QL).
27
Ontario Architects, supra note 14 at paras. 51, 53. The Canadian Intellectual Property Office’s most recent Prac-
tice Notice issued on 22 August 2007 reflects the Ontario Architects test, online: Canadian Intellectual Property
Office [Practice Notice].
28 Ontario Architects, supra note 14 at para. 62.
29 Ibid. at para. 60.
APPEAL VOLUME 14 w5
laterally and exclusively, does not constitute signicant governmental control.30 e incor-
poration of the body as a non-prot charitable corporation with charitable objects, tax-ex-
empt status, an ability to issue charitable receipts, or obligation to provide nancial and
corporate information to government is also insucient to constitute signicant govern-
mental co ntrol.31
In , the Federal Court of Appeal upheld the nding that a “public authority” must be
subject to ongoing governmental control within Canada and that the government exercis-
ing the control must be Canadian.32
2) Public Benefit
“Public benet” includes a duty to do something of benet to the public, but it is more than
that. In its evaluation, courts should consider the body’s objects, duties, and powers, in-
cluding the distribution of its assets.33 It would appear that public benet includes fulll-
ing a duty to the public, although this requirement has not always been determinative of
public authority status. 34 A body that regulates the practice of a profession and is duty-
bound to maintain an accurate register of members is just one example of a body that op-
erates for the public benet.35 Its decisions concerning membership and discipline may be
subject to appeal in a superior court on questions of fact and law.36 e fact that the body
benets its members does not preclude a nding that it also benets the public.37
D. The Only Way to Challenge an Official Mark
e grant of such a broad right to public authorities can be problematic. For example, the
protection that Canada Post has acquired for its ocial marks, including “special delivery,”
“post,” and “priority,” allows this Crown corporation to prevent its competitors from using
these generic terms to advertise their services accurately. is monopolization of common
terms has resurrected a problem that trade-mark law had already resolved: the accommo-
dation and preservation of the informational value of generic and descriptive terms for
competitors who need to use them.38 is potential for monopoly is exacerbated by the
regis trar’s lack of disc retion to refuse to give p ublic no tice of a n ocia l mark at a public a u-
thority’s request.39
Previously, it had been thought that there was no way to attack an ocial mark once it had
30 Ibid. at para. 64.
31 Practice Notice, supra note 27.
32 Canada Post Corporation v. United States Postal Service, 2007 FCA 10, 54 C.P.R. (4th) 121, leave to appeal re-
fused [2007] S.C.C.A. No. 117; aff’g 2005 FC 1630, 47 C.P.R. (4th) 177 (QL) [USPS2007].
33 Ontario Architects, supra note 14 at para. 52.
34 Gill & Jolliffe, supra note 3 at 5-56.
35 Ontario Architects, supra note 14 at para. 17.
36 Ibid. at para. 73.
37 Ibid. at para. 64; Practice Notice, supra note 27.
38 Stacey L. Dogan, “Trademarks and Consumer Information” in Faculty of Law, McGill University, Meredith Lec-
tures 2006: Intellectual Property at the Edge: New Approaches to IP in a Transsystemic World (Cowansville,
QC: Éditions Yvon Blais, 2007) [Meredith Lectures 2006] 321 at 323, n. 4); Gill & Jolliffe, supra note 3 at 5-61.
39 Gill & Jolliffe, supra note 3 at 5-62.
6wAPPEAL VOLUME 14
been advertised in the Trade-marks Journal.40 However, current jurisprudence has estab-
lished a way.A party wishing to challenge the validity of an ocial mark must bring an ap-
plication for judicial review of the registrar’s decision to give public notice under s. . of
the Federal Courts Act.41Subsection .() confers standing on any party who is “directly
aected by the matter in respect of which the relief is sought”; that is, any party who “could
either benet from, or suer a direct adverse impact from a decision.”42Although in the past,
applicants attempted to appeal the registrar’s decision under s. of the Trade-marks Act,
the Federal Court of Appeal ruled that applicants not party to the original proceedings be-
fore the registrar (which normally include only the requestor) do not have standing to ap-
peal.43
Pursuant to s. .() of the Federal Courts Act, an application for judicial review must be
brought within thirty days of the date on which the applicant receives notice of the regis-
trar’s decision. Although this is half the time allowed for an appeal under s. () of the
Trade-Marks Act, this dierence in limitation periods is not signicant since the court will
typically exercise its discretion to extend the limitation periods.44 e two most common
bases on which to challenge the registrar’s decision are error in determining public au-
thority status and error in determining adoption and use. If the court nds that the regis-
trar has been misled in these determinations, the ocial mark can be declared ineective
so as to give neither rights nor prohibitions under ss. and of the Trade-Marks Act.45
III. NARROWING OF OFFICIAL MARKS PROTECTIONS BY THE
FEDERAL COURT
e Federal Court has not been blind to the “very substantial” benets conferred on pub-
lic authorities by s. ()(n)(iii).46 Nor has it resisted commenting on t he concomitant “po-
tential for injury to trade-mark owners and to the public.”47 What has app arently changed
in recent years is the willingness of the Federal Court and the Court of Appeal to rein in
these substantial benets by adopting a narrower interpretation both of the provision and
of the legal procedure surrounding ocial marks. In the Ontario Architects case, the
Court of Appeal stated that s. ()(n)(iii) should not be given an expansive meaning,48 and
it seems the courts have remained faithful to this nding.
is recent approach is a signicant departure from the view that prevailed in when
40 Hannibal, supra note 21.
41 Federal Courts Act, R.S.C. 1985, c. F-7.
42 USPS 2005, supra note 1 at para. 12.
43 Ontario Architects,supra note 14 at para. 39.
44
Ibid. at para. 32. In Tall Ships Art Productions Ltd. v. Bluenose II Preservation Trust Society, 2003 FC 1442, F.C.J.
No. 1959 (QL) [Bluenose II] the Federal Court held that it served the interests of justice to grant an extension of
time for the applicant Province of Nova Scotia to commence proceedings for judicial review, despite the fact that
nearly two years had passed since the Registrar of Trade-marks had given public notice of three official marks be-
longing to the respondent Bluenose II Preservation Trust. In reaching this decision, the Court considered inter alia
the limited opportunity to question the official marks application process and its results as well as its failure to con-
sider the interests of the province in using the name of this iconic vessel. See generally Scassa, supra note 12.
45
FileNet Corp. v. Canada (Registrar of Trade-marks), 2001 FCT 865,13 C.P.R. (4th) 385 at para. 44 (QL) [FileNet].
46 USPS 2005, supra note 1 at para. 75.
47 Ibid.
48 Ontario Architects, supra note 14 at para. 64. This is echoed in USPS 2005, supra note 1 at para. 75.
APPEAL VOLUME 14 w7
Justice Cattanach of the Federal Court observed:
[a] public authority may embark upon a venture of supplying wares and
services to the public and in so doing adopt an ocial mark. Having
done so then all other persons are precluded from using that mark and,
as a result of doing so, on its own initiative, the public authority can ap-
propriate unto itself the mark so adopted and used by it without restric-
tion or control other than its own conscience and the ultimate will of the
electorate expressed by the method available to it.49
Justice Cattanach concluded that this represented the intention of Parliament, clearly ex-
pressed in the language of the statute, and “a Court has nothing to do but to obey it.”50 It is
equally clear, however, that for many years courts have “made” law by using their judicial
discretion to determine where on the spectrum of interpretation they will choose to rest
their judgment.
Perhaps it is the widespread commercial usage of ocial marks by public authorities and
the consequent unfairness to trade-mark owners that has caused the courts to shi their
interpretation of the statute to level the playing eld. In these circumstances, narrowing of
ocial marks is bound to assist the interests of trade-mark owners.51 e courts have ac-
complished this by giving clear direction on the correct procedure for challenging ocial
marks, by re-evaluating what constitutes a “public authority” and “signicant” government
control, and by requiring evidence of adoption and use.
e court has sharpened the test for “public authority” to a ner point, limiting its geo-
graphical scope and raising the bar with respect to how much control constitutes a “signi-
cant” degree of control. For example, in USPS , the Federal Court considered the
meaning of “public authority, in Canada.”52 Earlier decisions had held that public authori-
ties need not be Canadian in order to acquire an ocial mark,53and, over time, uncertainty
had grown. In this case the Court scrutinized the ambiguous English phrase “public au-
thority, in Canada” and the narrower French version “une autorité publique au Canada” and
ultimately adopted the simpler French version. In , the Supreme Court of Canada ce-
mented the nding by upholding the Court of Appeal’s decision to deny leave to appeal.54
e eect of this ruling is that ocial marks are now granted only to public authorities in
Canada that are subject to control by a Canadian government. Foreign public authorities,
like the United States Postal Service, no longer qualify. What remains to be seen is the im-
pact of this decision on foreign public authorities that currently own ocial marks in
Canada. Faced with the possibility that they may have a hard time enforcing them, more for-
eign authorities may apply to protect their ocial marks as registered trade-marks.
A second and earlier example illustrates that the Courts have employed a conservative in-
terpretation of what constitutes “signicant governmental control,” the rst step in the test
for evaluating public authority status. In , the Court of Appeal in the Ontario Archi-
49 Insurance Corporation of British Columbia v. Registrar of Trade Marks, [1980] 1 F.C. 669 at para. 74 (T.D.)
[emphasis added].
50 Ibid. at paras. 74-76.
51 “Priority Mail”, online: Cassels Brock .
52 Supra note 1 at para. 45.
53 Ibid. at para. 56.
54 USPS 2007, supra note 32.
8wAPPEAL VOLUME 14
tects case found that the trial judge erred in concluding that a body created by statute is
under signicant governmental control because its enabling legislation can be amended
or repealed by government at any time.55As it now stands, nothing less than “ongoing gov-
ernment supervision of the activities of the body claiming to be a public authority” will
satisfy the test for signicant governmental control.56
is recent ne-tuning of the “public authority” denition may be especially worrisome for
charities as ocial marks owners. In , the Canadian Jewish Congress challenged the
registrar’s decision to give notice of an ocial mark—a stylized menorah—requested by
Chosen Peoples Ministries (“CPM”).57 Justice Blais of the Federal Court, in concluding
that CPM was not a public authority for the purposes of s. ()(n)(iii), observed that the
government neither funds, monitors, nor participates in the disposal of CPM’s assets. More
broadly, he stated that the “Government of Canada cannot intervene in any way with how
churches or charitable organizations like CPM conduct their aairs.”58 As a result of this de-
cision, charities, particularly religious charities, may no longer be able to obtain ocial
marks to protect their intellectual property.59 Moreover, those that already have ocial
marks may nd them vulnerable to attack from third parties.60 As in the case of foreign
public authorities, charities would be well-advised to protect their intellectual property
through parallel registered trade-marks.61
It appears that, of the two criteria that bodies must meet to establish public authority sta-
tus (signicant governmental control and public benet), signicant governmental control
is the most important. e court has put most of its energy into honing that denition and,
as discussed above, the meaning of “public benet” has received comparatively little at-
tention. e threshold for satisfying the “public benet” criterion seems low and, in recent
cases, it has not been determinative of a body’s public authority status.62 An organization
may benet the public without being a public authority.63
e nal narrowing strategy is engaged at the early stages of the application process when
the registrar receives a request for public notice. In Piscitelli v. Ontario (Liquor Control
Board), Justice Blais of the Trial Division ruled that in conrming previous adoption and
use of the mark, the registrar is entitled to rely on the requestor’s “bald assertion.”64Ho w-
ever, where doubt is raised by a third party, the onus is on the requestor to provide evidence
55 Ontario Architects, supra note 14 at para. 62.
56 Ibid. at para. 59.
57
Canadian Jewish Congress v. Chosen People Ministries, Inc., 2002 FCT 613, 214 D.L.R. (4th) 553 [Chosen Peo-
ple].
58 Ibid. at paras. 57-58.
59 Hannibal, supra note 21.
60
Mark Wong & Terrance Carter, “Charities Lose Inherent Right to Official Mark Registrations” Charity Law Bul-
letin (20 December 2002), online: Carters .
61 Ibid.
62 For a discussion of this point in relation to intellectual property in the schooner Bluenose II, see Scassa, supra
note 12 at 303.
63 In See You In, the applicant challenged the Canadian Olympic Committee’s status as a public authority on the
grounds that it lacked sufficient governmental control and failed to operate for the public benefit. The Federal
Court disagreed, finding that governmental control existed, even if it was exercised more directly in other re-
lated organizations (See You In - Canadian Athletes Fund Corp. v. Canadian Olympic Committee, 2007 FC
406, F.C.J. No. 541 at paras. 55, 63 (QL) [See You In]).
64 Piscitelli v. Ontario (Liquor Control Board), 2001 FCT 868, F.C.J. No. 1243 at paras. 46-47 (QL). See also
FileNet, supra note 45 at para. 8.
APPEAL VOLUME 14 w9
of adoption and use since, from a practical perspective, this is easier than requiring the
third party to show no adoption and no use.65
Federal Court jurisprudence has had a transformative eect on the law and procedure sur-
rounding ocial marks. Not only has it established judicial review as the appropriate way
to challenge established ocial marks; it has shaped the process by which such marks are
acquired so that meritless requests are less likely to result in undeserved protection. is
front-end challenge, which is manifested in the registrar’s current practice of requiring ev-
idence of public authority status as well as adoption and use, is perhaps the more valuable
of the two. It is a pre-emptive strike that ultimately saves time and money that would oth-
erwise be spent challenging an undeserved but advertised mark. It allows the registrar to
act as an eective gatekeeper rather than as a “rubber stamp” in the process of securing an
ocial mark.66
IV. THE “ONE CENT NOW” DISPUTE
e “One Cent Now” dispute illustrates the power of the ocial mark as a restraint on the
use of a ubiquitous image (the Canadian penny) and phrase (“one cent”), as well as the
troubling implications of the use of this overbroad power.
In February , the City of Toronto launched a campaign to lobby the federal government
to return one cent of the GST to municipalities across the country. e campaign’s man-
date is to secure a permanent source of funding to maintain municipal infrastructure and
allow investment in new projects. Toronto called the campaign “One Cent Now,” and it
was endorsed by mayors across the country. e signs, bumper stickers, campaign buttons,
website, and toll-free number for this campaign make use of the image of the penny and/or
the phrase “one cent.” e penny image is an ocial mark, protected under s. ()(n)(iii)
of the Trade-marks Act and owned by the Royal Canadian Mint.67
e mint, which is a Crown corporation, sent a bill for , to the City of Toronto for
use of its intellectual property: , for using the words “one cent” in the campaign
website address (www.onecentnow.ca) and email address (onecentnow@toronto.ca),
, for using “one cent” in the campaign telephone number (-ONE-CENT), and
, for using the image of the Canadian penny in related paraphernalia.68
e City of Toronto has resisted the mint’s claim, arguing that “One Cent Now” is a “pub-
lic education campaign,” which makes the mint’s request for money inappropriate: “One
government should not be seeking payment from another government for the use of words
and an iconic image in a not-for-prot public education campaign.”69It wou ld appear that
the statutory language and judicial interpretation of s. ()(n)(iii) support this assertion.
65 Piscitelli, ibid. at paras. 46-47.
66 See You In, supra note 63 at para. 43.
67 Because this dispute has not proceeded to trial, it is difficult to discuss it in any detail. The writer’s repeated re-
quests for information on both parties’ positions went unanswered. It is unclear, for example, under what intel-
lectual property scheme the mint claims ownership of the phrase “one cent.” Unlike the penny image, it does
not appear in the Canadian Intellectual Property Organization’s online trade-marks database.
68 City of Toronto, News Release, “Success of Toronto’s ‘One Cent of the GST NOW!’ education campaign brings
request for payment from the federal government” (5 October 2007), online:
69 Ibid.
10 wAPPEAL VOLUME 14
e provision prohibits the adoption of an ocial mark as a trade-mark “or otherwise,”
which has been interpreted to mean “or in connection with a business in any other way.”
Sections and do not prohibit non-commercial use. In fact, it has been suggested by the
Federal Court that the provisions do not even prevent use unless the use is primarily for a
business purpose. 70
e mint includes images of the penny, nickel, dime, and quarter among its ocial marks.
To reproduce them, parties must submit to the mint a detailed application and a non-re-
fundable fee for a determination on whether use will be allowed and at what cost, if
any.71 e time limitations are short and the royalty fee structure detailed. Parties permit-
ted to use a mark for a fee and those whose have used one without consent must pay roy-
alties upon receiving a bill from the mint or face “suitable measures of recourse.”72
In managing its intellectual property, the mint says that it must ensure tasteful use that is
compatible with both the federal government’s public policy objectives and, it would fol-
low, their own public policy objectives.73 Because the mint does not enumerate either set
of policy objectives, it is dicult to know whether public education is among them. e fact
that the mint oers a free downloadable education program (“Roll a Coin rough the
Curriculum”) suggests that it values some forms of public education, although perhaps not
the kind of education that puts into question federal government spending choices.
While it would be interesting to debate whether the “One Cent Now” campaign actually is
a bona de public education campaign and whether Toronto can prove non-commercial use
and thereby avoid paying the mint, those questions are not within the purview of this paper.
e “One Cent Now” dispute is relevant to this paper because it raises interesting public
policy issues and questions of legitimacy.
e media coverage of the “One Cent Now” dispute has prompted Canadians to articulate
their views on Crown intellectual property. e City of Toronto has suggested that the mint,
as a federal Crown corporation, is using intellectual property litigation as a threat to sub-
due a potentially successful campaign to get more money from the federal government.74
Similarly, the Globe and Mail commented that the mint, motivated by revenge, was “bent
on slicing a pound of esh from Toronto.”75Others decr y the mint for exercising “bad judg-
ment” by “going aer everyone who uses this … iconic image.”76 A spokesperson for the
Toronto mayor observed: “e city has every right to use pictures of the most common of
Canadian coins. is is a coin that many people … won’t even bend over to pick … up.
Let’s be real here.”77
70 Canadian Olympic Assn. v. Konica Canada Inc., [1990] 2 F.C. 703 (T.D.) (QL).
71 Royal Canadian Mint, “Customer Services/Intellectual Property Policy: Royalties,” online:
72 Ibid.
73 Royal Canadian Mint, “Intellectual Property Policy: Guidelines,” online: .
mintpublic/index.aspx?requestedPath=/en-CA/Home/default.htm>.
74 One Cent Now, supra note 68.
75 “Is the Mint pinching pennies for political gain?” Globe and Mail (6 October 2007) A19.
76 Gord Steeves, “Squeezing the penny for all it’s worth”, online: Federation of Canadian Municipalities
77 Chris Wattie, “City outraged over mint fee for one-cent campaign.” National Post, online: <http://communi-
ties.canada.com/nationalpost/blogs/toronto/archive/2007/10/05/city-outraged-over-mint-fee-for-one-cent-
campaign.aspx>.
APPEAL VOLUME 14 w11
Notwithstanding the fact that those who oer these opinions may not be able to identify
the intellectual property rights under which the mint is claiming the money, Canadians
are well able to grasp the larger norm ative issue, Is it fair to allow government to charge the
rest of us to use something as commonplace as the image of the penny and the phrase “one
cent”? In the context of Crow n copyright, government justies its practice of controlling
and supervising the publication of government works for reasons of accuracy and in-
tegrity.78 Similarly, it justies ocial marks as a necessary protection against misleading
and fraudulent use by commercial actors who would trade on the authority of public bod-
ies. Unfortunately, ocial marks protection has grown so broad that it largely defeats its
original purp ose of removing nati onal symbols from t he eld of trade. Instead, it allows
stronger parties to use intellectual property rights for silencing, vengeful, and threatening
predation on weaker, less resourceful parties.79 is is fertile ground for political cynicism,
and it compromises the integrity of intellectual property as a whole.
V. THE CRISIS OF LEGITIMACY: CAN OFFICIAL MARKS BE
JUSTIFIED?
A. The Rule of Law
e rule of law is oen dened by stating its purpose, which is to protect against anarchy,
to allow people to know in advance the legal consequences of their actions so that they can
plan their aairs with reasonable condence, and to guard against some types of ocial ar-
bitrariness.80 e rule of l aw requires legislatu res to dra clear laws that both target prec isely
what needs protection and provide a “broad defence for the unexpected and unforeseen
cases arising from the grant of unexpected, unforeseen, and probably unnecessary protec-
tion.”81 From this perspective, the increasingly expansive use of ocial marks undermines
the rule of law. No longer does the provision point with a Lord Denning-esque red hand82
to “badge, crest and emblem” and say “protect these and these alone.” In the current climate,
wherein ocial marks can be descriptive everyday words, phrases, and images that are far
from “ocial-looking,” there is plenty of opportunity for commercial actors unwittingly
to infringe the rights of public authorities. “One Cent Now” is a good example. When the
lawyers of the largest city in Canada can fail to be aware of infringement possibilities and
to guard against them, it is hardly reasonable to expect better from the average Canadian
entrepreneur.
Ocial marks legislation is “defective.”83 e purpose it was designed to accomplish—to
protect authoritative symbology from commercial use—has been eclipsed by the purpose
for which such marks are now so highly prized: to provide public authorities with a cheap
and eective shortcut for shielding their intellectual property while obtaining an unfair
advantage over their less-fortunate fellow comp etitors in the commercial market. In a
78 Elizabeth F. Judge, “Crown Copyright and Copyright Reform in Canada” in Michael Geist, ed., In the Public In-
terest: The Future of Canadian Copyright Law (Toronto: Irwin Law, 2005) 550 at 553.
79 Although under ordinary circumstances it might be difficult to visualize the City of Toronto as an underdog,
here the even wealthier mint is more easily painted as the villain of the piece.
80
Richard H. Fallon, “The Rule of Law as a Concept in International Discourse” (1997) 97 Colum. L. Rev. 1 at 7-8.
81 David Vaver, “Does the Public Understand Intellectual Property Law? Do Lawyers?” Meredith Lectures 2006,
supra note 38 at 13 [Vaver].
82 Thorton v. Shoe Lane Parking Station Ltd., [1971] 2 Q.B. 163 at 170 (C.A.).
83 Henderson, supra note 12 at 98.
12 wAPPEAL VOLUME 14
strange about-face, the public authorities have become the very commercial actors from
whom this symbology was withheld in the rst place. Few would deny the merit in pro-
tecting national symbols like the penny or the ag from tasteless, disrespectful, or oen-
sive uses, but such use is not at issue in cases like the “One Cent Now” dispute. What
appeared to be at issue from the public perspective was the mint’s taking advantage of a de-
ciency in the legislation simply to pad its own purse.
Section ()(n)(iii) is “out of touch with both business and ordinary public sentiment.”84
Times have changed, and in these times ocial marks protection is too broad, its justi-
cations are largely meaningless, and the unfair advantage it grants “un-levels” the playing
eld. In his report Intellectual Property: Litigation, Legislation, and Education,85 Gor-
don F. Henderson recommended that ocial marks be abolished since registered trade-
marks and certications marks could do the same job without granting an overbroad right.
e fact that Parliament has no plans to do away with s. ()(n)(iii) makes it all the more
important and valuable for courts to put meaningful limits on the ambit of ocial marks.
Perhaps recent jurisprudence is moving in that direction. Some foreign public authorities
and Canadian charities already have parallel protection for their indicia under both s.
()(n)(iii) and a registered trade-mark. Ocial marks protection may yet have a purpose
to fulll, albeit a dramatically narrowed one, in policing use of national symbols. Consid-
ering that there exists alternative protection that is p erhaps better tailored for commercial
use, the overbroad shield of the “super mark” appears, on balance, unwise and unfair.
David Vaver once observed:
[F]or the intellectual property system to survive, it must gain and keep public re-
spect. To be respected, it must be known…. There are now calls that the public
should become better educated about intellectual property…. But one must be
prepared for the consequence that an educated public is entitled to demand
greater coherence and persuasiveness from the intellectual property system than
it presently exhibits. If those calls are not met and answered, then greater knowl-
edge will not produce greater public respect, but instead cynicism, disregard and
avoidance.86
Disputes like “One Cent Now” breed cynicism and disrespect both for the intellectual prop-
erty regime and for government. Not only are people surprised to learn that the mint (or
anyone) has laid claim to the phrase “one cent” or the image of something as common as
the penny, they are dismayed that the parties to the dispute—both government bodies—
cannot negotiate a reasonable compromise that does not involve demand letters and pos-
turing in the media.
Judges too have diculty with this concept. In Royal Roads,87the university objected to the
unauthorized use of their ocial mark “You can get there from here” by the Crown agent
Canada Investment and Savings. In
obiter
, Justice MacKay of the Federal Court commented:
“Two agencies, each serving the public in dierent ways and with dierent programs, should
be able to work out arrangements necessary to discuss contemplated uses of a single mark
….” Few would disagree with him. Disputes of this kind undermine our condence in gov-
84 Vaver, supranote 81 at 1.
85 Supra note 12.
86 David Vaver, “Intellectual Property Law: The State of the Art” (2000) 116 L.Q.R. 621.
87 Supra note 19.
APPEAL VOLUME 14 w13
ernment to act eciently and thereby undermine their legitimacy and the rule of law.
B. Public Order
e overbroad protection aorded under s. ()(n)(iii), and the manner in which this over-
breadth aects the rule of law, feeds into the undermining of another essential societal
value—public order. Public order has been dened as the values and rules of community
life that are embodied in legislation as well as “the fundamental values of the society at a
particular point in its development.”88 Public order is a motherhood-type concept, one
which underpins the entire Canadian legal and constitutional order.89With specic regard
to ocial marks, public order serves as a balancing factor; it is at once the policy justica-
tion behind the protection of government bodies for which the marks are designed, and a
limited means by which the registrar may narrow the protections under s. ()(n)(iii).90
In the intellectual property setting, public order embodies a reasonably fair and even, if
regulated, marketplace. Disputes like “One C ent Now” breed fear and anger in the mar-
ketplace. ey have a chilling eect on weaker parties that have a legitimate interest in an
ocial mark but lack the resources to respond to claims that may in fact have little merit.91
On balance, it is cheaper to “pay up” or “cease and desist” rather than risk being sued by
intellectual property owners like the Royal Canadian Mint and, most notable these days, the
Canadian Olympic Committee, who are zealous in policing their ocial marks and who
have deep pockets.92
Not all parties can or will back down, however. Consider the Great Canadian Dollar Store,
Dollarama and the other “dollar store” chains, many of whom have protected their name
under a registered trade-mark and who would justiably be ill at ease should the mint de-
cide to claim “dollar” as an ocial mark. While the City of Toronto may assert that its cam-
paign makes non-commercial use of “one cent” and the image of the penny, there is no
way that these Canadian entrepreneurs could hide behind that argument.
Others have little choice but to assume the considerable nancial burden of litigation to
protect their interests. Such was the case in Chosen People where the Federal Court, rec-
88 Goulet v. Transamerica Life Insurance Co. of Canada, 2002 SCC 21,210 D.L.R. (4th) 22 at para. 43 (QL).
89 “Canadian … public order protects the functions of the state (security, morality), but also the citizens against
abusive intrusions or omissions of the state that are detrimental to the population and to the promotion of their
rights” (L. Lamarche et al., Retaining Employment Equity Measures in Trade Agreements (Ottawa: Status of
Women Canada, 2005) at 69).
90 Mihaljevic, supra note 5. See also Canada Post Corp. v. Canada (Registrar of Trade Marks), [1991] F.C.J. No.
1270 (T.D.) (QL).
91 In Bluenose II, the Society’s copyright claim over the image of the famous schooner was of questionable merit.
However, this did not deter the Society from charging over one hundred local merchants, artisans, entertain-
ment businesses and government bodies for depicting the Bluenose II in their commercial endeavours (Scassa,
supra note 12 at 297, n. 21).
92 In the past, the Canadian Olympic Committee (COC) has aggressively restricted use of its official marks. In an-
ticipation of the Vancouver 2010 Winter Olympics, the protection already afforded the COC under s. 9(1)(n)(iii)
has been augmented by the Olympic and Paralympic Marks Act, which received Royal Assent in June 2007. Al-
though the Industry Minister defended the legislation as necessary to protect the COC’s intellectual property
from ambush marketers, others have criticized it as overbroad. The legislation departs from trade-mark law in
that it does not require the COC, the Canadian Paralympic Committee, or the Vancouver Organizing Commit-
tee to show that a competitor has irreparably harmed its reputation or business interests in order to obtain an
injunction. (Jeff Lee, “Games trademark law excessive, critics say. Act designed to protect Olympic brand could
muzzle free expression, they warn.” Vancouver Sun (30 March 2007), online:
couversun/news/story.html?id=25fad435-fba6-4e00-b8f7-62e61fdb3e1c>).
14 wAPPEAL VOLUME 14
ognizing the menorah as “the ocial emblem” of the Jewish people and the Jewish faith,
took the practical and equitable view that it would be “counterproductive” to prohibit Jew-
ish organizations from using and adopting that mark.93 Is the penny not equally as com-
mon, if not equally as ancient, as the menorah or the Bluenose II?94
In USPS, Canada Post argued that the acceptance of certain marks for publication by t he
registrar was contrary to the public order because the marks were either generic terms or
terms identical to those in common use by other postal authorities. As mentioned above,
this points to an important deciency in the ocial marks regime. Prohibiting the use of
words and phrases essential to the operation of enterprises can seriously threaten their
ability to function. Ironically, couriers cannot advertise their “special delivery” and “priority”
services without the consent of Canada Post, which owns the ocial mark.95is is one of
many instances in which provincial and national public authorities, in claiming s.
()(n)(iii) rights over generic and descriptive terms, have similarly distorted the market.
VI. CONCLUSION
“In modern times with the growing number of Crown corporations all competing with pri-
vate industry or, even worse, of a monopolistic nature, these corporations should be able
to take their lumps like all others.”96 Until recently, Crown corporations and other public
authorities have not “taken their lumps” but rather have enjoyed privileges and immuni-
ties well beyond the original purpose of s. ()(n)(iii). However, w here Parliament has failed
to tread, the courts have cleared a path toward a greater measure of fairness through a
much-needed narrowing in the interpretation of a provision that is essentially awed.
e “One Cent Now” dispute illustrates much of what is bad about ocial marks protection:
the overbreadth, the unfair advantage, the potential for abuse, and the commodication of
everything and anything including everyday words and national symbols. Although public
reaction paid little mind to the legal reasons for the mint’s claim, it dened with precision
the question that lies at the heart of the issue, Is a law that makes us pay to use common-
place words and images a justiable law and, if it is not justiable, then why is it still law?
Provisions like s. ()(n)(iii) that operate inconsistently with society’s fundamental values
diminish public respect for government and for intellectual property—which, as argued
above, undermines both the rule of law and, ultimately, public order.
e recent jurisprudence of the Federal Courts is to be especially valued because, in up-
holding the original purpose of s. ()(n)(iii) and in mitigating its deciencies, it brings the
law closer to a state that Canadians can both accept and respect. However, in the face of the
clear words of Parliament, the Courts’ eort to narrow the scope of ocial marks is prob-
ably close to reaching its limits. It may be that this jurisprudence can provide impetus to-
ward a more rational regime that comports with the rule of (intellectual property) law and
modern notions of public order, even where decades of distinguished commentary has not.
93 Chosen People, supra note 57 at paras. 62-64.
94 See Scassa, supra note 12, in which the author comments on the “intellectual property ‘gold rush’” in which
claims are staked in the public domain.
95 USPS 2005, supra note 1 at para. 4.
96 W & H Ventures Ltd. (c.o.b. Michel’s Bakery Café) v. Manitoba,[1999] M.J. No. 533 at para. 23 (Q.B.), quot-
ing Marion, Marion and Marion v. Western Canada Lottery Foundation and Manitoba Lotteries Foundation
(1984), 28 Man.R. (2nd) 269 at 270 (Man. C.A.).
APPEAL VOLUME 14 w15
is could involve requiring public aut horities to “take their lumps” with regard to com-
mercial uses of marks that essentially function as trade-marks, while a more restricted group
of public institutions (i.e., actual government bodies and agencies) could operate a system
of protected symbology that protects Canadian values and institutions, but without market
distortion. What is clear is that further discussion and reform are imperative.
16 wAPPEAL VOLUME 14
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