A recent decision of the Federal Court of Appeal has confirmed that the registration of an official mark in the face of a claim for infringement is not a valid defence to such a claim. The term "official mark" is used to describe marks adopted and used by a public authority, in Canada as a mark for goods or services. A request for an official mark may only be filed by a public authority. The Act forbids the adoption of a trademark so nearly resembling as to be likely to be mistaken for a mark adopted by a public authority of which the Register has given public notice. There are many of these marks and their existence can cause problems for businesses seeking new marks.
Quality Program Services Inc. (QPS) is a British Columbia company. Since April 2012 in British Columbia, it has provided a program focusing on energy awareness, conservation, and efficiency, in association with the mark EMPOWER ME. The program targets communities of new Canadians, which QPS found were not participating in energy efficiency programs established by governments and public utilities.
QPS filed a trade-mark application on April 12, 2013, for the mark EMPOWER ME in association with energy awareness, conservation, and efficiency services. A registration was granted on July 23, 2014.
QPS uses the EMPOWER ME mark on its website, social media, various types of promotional materials, at booths at community cultural events, and in advertising in various publications. The mark has also been used under licence by sponsors to promote the Empower Me Program. The mark is typically displayed as "EmPower Me".
On November 27, 2013, Ontario, through the Ministry of Energy, announced that it was launching a website in association with the name "emPOWERme" the website was intended to help energy consumers in Ontario take charge of the power they use by better understanding the province's electricity system. On December 15, 2015 it wrote to Ontario, requesting that it cease using the EMPOWER ME mark. On October 26, 2016, QPS commenced an action asserting infringement in the Federal Court.
Ontario then sought official mark status for "emPOWERme", by writing to the Registrar on December 19, 2016, requesting that the Registrar give public notice of the adoption and use by the Ministry of Energy of "emPOWERme" as an official mark. The Registrar issued the notice on January 10, 2018. The Ministry then claimed in the action that the existence of the official mark was a complete defence to a claim for infringement.
The Trial Decision
The judge observed that no previous decision had considered this issue. However, he refused to adopt an interpretation that conferred a statutory immunity upon a public authority without clear legislative language supporting this interpretation. The Act prohibits certain activities by others, once public notice of use of the official mark has been given. However, it does not expressly confer upon public authorities the right to use an official mark in a manner which contravenes other provisions of the Act. The Act did not eliminate rights already conferred on the owner of a registered trademark. The Judge declared that Ontario had infringed QPS's trademark and awarded it $10,000 damages.
Ontario appealed to the Federal Court of Appeal. It said that using its official mark was not infringing as its existence was a complete defence to the claim of infringement.
The Court referred to the wording of the Act. The Act prohibits the use of a mark that has been "adopted and used by any public authority in Canada as an official mark for goods and services" where "the Registrar has, at the request...of the...public authority...given public notice of its adoption and use". Textually, this allows public authorities to claim against those who use an official mark. But the text does not confer on a public authority any protection against claims for trademark infringement or other claims under the Act. A public authority that uses a mark confusing with a registered trademark does so at its peril. Clear legislative wording would be required to affect a different result.
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