School boards in Ontario are facing new pressures as a result of declining enrolment and decreases in funding, competition for students from private speciality schools and scrutiny by much more informed and sophisticated local communities. In response to these pressures, many school boards are trying to develop and communicate their ‘brand’.
Trademarks and logos are valuable assets which identify the source of products or services, convey the brand identity of the owner and distinguish it from others. Although trademarks do not have to be registered in order to be protected, trademark registration is always of key concern and a good investment, as the scope of rights afforded by registration and the available means of enforcement are greater and more robust than for unregistered trademarks.
Registration offers the benefits of:
- Providing the owner with the statutory exclusive right to use the trademark in association with particular products or services across Canada;
- The right to sue for infringement or depreciation of goodwill;
- Access to the Federal Court whose judgments are enforceable across the country;
- A defence to passing off actions by others; and
- Providing notice that it is a trademark, thereby dissuading others from adopting or using a similar or identical mark and blocking registration of confusingly similar marks.
When protecting a trademark or logo used by an educational institution, it is important to consider whether official mark protection rather than just regular trademark protection is available, as there are many significant benefits to having an official mark. Among them are enhanced protection, a simplified review process and no renewal fees.
“Official marks” are unique to Canada. Subparagraph 9(1)(n)(iii) of the Canadian Trade-marks Act (the “Act“) provides that 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, any badge, crest, emblem or mark adopted and used by any public authority in Canada as an official mark in respect of which the Registrar has given public notice of its adoption and use. This provision gives very broad privileges to public authorities who adopt and use official marks and can result in serious restrictions on the ability of others to expand use of a registered trade-mark, obtain registration of a common law mark, or adopt a new mark that resembles the official mark. An official mark prohibits others from adopting or registering a trademark that is identical or so nearly resembling as to be mistaken for an official mark, irrespective of its associated products or services.
The party requesting that the Trademarks Registrar give notice of an official mark must establish that it is a “public authority” and that it has adopted and used the mark prior to filing the request.
Only a public authority, such as a government organization or agency or a quasi-governmental organization at the federal, provincial, or municipal level will be able to obtain the publication of a mark that it has adopted and used as an official mark. The test for public authority status requires that the following two elements be established:
- A significant degree of control must be exercised by the appropriate government over the activities of the requesting party; and
- The activities of the requesting party must benefit the public.
School boards in Ontario are created by statute and subject to the authority of the provincial government and provincial legislation, as is the case in most provinces of Canada. Additionally, in Ontario school boards receive funding from the provincial government. The dominant purpose of such legislation is generally to provide students with the opportunity to realize their potential. Legislation mandates that the role of school boards is to enhance student achievement and well-being and to maintain confidence in the publicly funded education system. Therefore, school boards, as partners in the public education system, provide a public benefit and operate for the benefit of the public. Consequently, school boards generally qualify as a “public authority” and are eligible for the benefits associated with official marks. Similar rights are given to any university.
The Process and Benefits
A request for public notice of the official mark is filed with the Trade-marks Office, along with submissions to support the public authority status of the requesting party, evidence that it has adopted and used the mark, and payment of the government fee of $500.
Unlike regular trademark applications, the request is not subject to examination for compliance with the Act which prohibits marks that are descriptive, that are surnames, that lack distinctiveness, or that are confusingly similar to marks that have been previously used or registered by others. In addition, official marks are not restricted to any particular goods or services.
Additionally, unlike regular trademark applications, the official mark request is not subject to opposition by third parties. The only way a third party can attack an official mark is to challenge the public authority status of the entity that adopted the official mark.
The status of an official mark is acquired when the notice of its adoption and use is published in the Trademarks Journal.
Registered trademarks currently enjoy a 15 year term, renewable upon payment of a renewal fee. No proof or declaration of continuing use is required. Recent legislative changes that are expected to come into force in 2018 will reduce the renewal period to 10 years. In contrast, official marks do not require renewal. After public notice is given, there are no fees to pay and no legislative provisions regarding cancellation. The public authority can prohibit others from using the mark in association with any goods or services and not just those in respect of which the public authority uses its official mark.
Many school boards in Ontario are now spending considerable time and effort creating and promoting their brand. As such, school boards should seriously consider using official marks to protect their valuable intellectual property assets.
The official mark is a unique and valuable tool available for the protection of school board trademarks and logos. The process to protect an official mark is faster than obtaining a trademark registration, there are no maintenance costs and the protection obtained is enhanced compared to regular trademark registrations.
Please join Catherine M. Dennis Brooks on Thursday, April 21, 2016 at 10:00am for Morning Recess when she will review in greater detail how school boards can protect their brands using official marks.