Draft – Request to give public notice under subsection 9(4) of the Trademarks Act

Publication Date: 202X-XX-XX

This notice is intended to clarify the practice of the Trademarks Office and the Registrar of Trademarks with respect to requesting that the Registrar give public notice under subsection 9(4) of the Trademarks Act ("the Act").

Overview

Subsection 9(4) of the Act provides that the Registrar may, on his or her own initiative or at the request of a person who pays the prescribed fee (the "requesting party"), give public notice that subparagraph 9(1)(n)(iii) of the Act does not apply with respect to a particular official mark. This notice may be given if the relevant entity (the "holder") that made the request under subparagraph 9(1)(n)(iii) of the Act for the public notice is not a public authority or no longer exists.

On receipt of a request and payment of the prescribed fee, the request and the relevant file will be reviewed. If the Registrar is satisfied that it is necessary to do so, a notice will be sent to the holder of the official mark requesting evidence of the holder's public authority status. See the practice notice entitled "Official marks pursuant to subparagraph 9(1)(n)(iii)" with respect to the evaluation of public authority status. If the Registrar is not so satisfied, a notice will not be sent to the holder of the official mark.

Communication procedures

Requests must be submitted in writing, by mail or fax, addressed as follows:

Requests under subsection 9(4) of the Act will be placed on the relevant file. Receipt of requests will be indicated by a note "Request under subsection 9(4) of the Trademarks Act received on [YYYY/MM/DD]" on the action history page of the relevant official mark on the Canadian Trademarks Database. If the Registrar determines that sending a notice to the holder of the official mark is not warranted, the Registrar will inform the requesting party by way of letter. If the Registrar sends a notice to the holder, the Registrar will inform both parties of the final assessment.

Required information and fee

Requests under subsection 9(4) of the Act must identify the relevant official mark, including the file number and the name of the holder of the official mark. In addition, the requesting party should provide information or evidence demonstrating that the official mark holder is not a public authority or no longer exists.

As the request does not create a proceeding between the holder of the official mark and the requesting party, any information provided by the holder will not be provided to the requesting party. Any additional information submitted by the requesting party after the request is submitted will be placed on the relevant file but will not be considered by the Registrar.

A request may not relate to more than one official mark.

A request under subsection 9(4) of the Act must be accompanied by the prescribed fee of $XXX as set out in section XX of the Trademarks Regulations and Item XX of the Schedule to the Regulations.

The prescribed fee is for the request itself and is not dependent on the final outcome of the request.

Reasons why the Registrar may not send a notice to the official mark holder

The Registrar determines on a case-by-case basis whether a notice to the official mark holder is necessary. Generally, a notice is not necessary in the following cases:

• the official mark holder has previously been requested to provide evidence as a result of a request that remains pending before the Registrar;
• the official mark was previously the subject of a request and the Registrar determined that the holder is a public authority in the one year period preceding the receipt date of the current request;
• the request is received within one year of the date of the Registrar giving public notice of adoption and use of the official mark under paragraph 9(1)(n)(iii) of the Act;
• the holder of the official mark is listed as Her Majesty the Queen in right of Canada or a province, including as represented by any current or previous department, agency, crown corporation or special operating agency;
• the holder of the official mark is listed as a municipal government entity; or
• the content of the request and the official mark file does not raise any doubt respecting the holder's public authority status or its existence.

Notice to the official mark holder

If, after reviewing the request and the relevant file, the Registrar's initial assessment is that the holder is not a public authority or no longer exists, the Registrar will generally send a notice to the official mark holder requesting evidence of the holder's public authority status.

The Registrar will send the notice to the address of record of the holder or of the appointed trademark agent, if any.

The Registrar is not responsible for any correspondence not received by the holder or its appointed trademark agent in cases where the Registrar has not been notified of a change of address [see subsection 6(2) of the Regulations].

Timing

If a notice is sent to the official mark holder, they must reply within three months from the date of the notice with evidence of their status as a public authority.

Evidence of public authority status

The Registrar will apply the two-part test, adopted by the Federal Court of Appeal in Ontario Association of Architects v. Association of Architectural Technologists of Ontario, (2002), 19 C.P.R. (4th) 417 (F.C.A.); reversing (2000), 19 C.P.R. (4th) 417 (F.C.T.D.), to evaluate public authority status. The two-part test is made up of the following elements:

• a significant degree of control must be exercised by the appropriate government over the activities of the body; and
• the activities of the body must benefit the public.

For further information regarding the information required to assess public authority status, please refer to the practice notice entitled "Official marks pursuant to subparagraph 9(1)(n)(iii)" as well as section 5 of the Trademarks Examination Manual.

Note that the Registrar will not require evidence of adoption and use of the official mark.

Extension of time

The Registrar may grant an extension of time to provide evidence of public authority status if the Registrar is satisfied that the facts justify the need for an extension of time.

As the intent is to provide an efficient and summary procedure for removing official mark protection, an extension of time for providing evidence will be granted only in exceptional circumstances and the Registrar will grant only one request for an extension of time up to a maximum period of three months. The following are examples of what the Registrar may consider exceptional circumstances justifying an extension of time.

If the deadline has already passed, the Registrar may consider a request for a retroactive extension of time. Requests for a retroactive extension of time must include sufficient facts for the Registrar to determine that the failure of the holder to meet its deadline or apply for an extension within the time limit was not reasonably avoidable. The Registrar considers that there is no authority to grant a retroactive extension of time after the Registrar has given public notice that subparagraph 9(1)(n)(iii) of the Act does not apply with respect to the badge, crest, emblem or mark.

Consequences for holder's failure to furnish evidence

If the holder does not respond or does not provide any evidence in response to the notice within the allotted time, the Registrar will generally give public notice that subparagraph 9(1)(n)(iii) of the Act does not apply with respect to the badge, crest, emblem or mark. Confirmation of the Registrar's final assessment of the request to give such public notice will be sent to the holder or their appointed trademark agent, if any. If such public notice is given by the Registrar, the status of the official mark on the Canadian Trademarks Database will be amended to read "inactivated".

Consequences of insufficient evidence of public authority status from the holder

If, after the holder provides evidence in response to the notice, the Registrar is still of the view that the holder is not a public authority or no longer exists, the Registrar will give public notice that subparagraph 9(1)(n)(iii) of the Act does not apply with respect to the badge, crest, emblem or mark. Confirmation of the Registrar's final assessment of the request to give such public notice will be sent to the holder or their appointed trademark agent, if any. If such public notice is given by the Registrar, the status of the official mark on the Canadian Trademarks Database will be amended to read "inactivated".

Ex officio Issuance of a notice by the Registrar to same holder

If the holder does not respond to the notice, does not provide any evidence in response to the notice, or provides evidence in response to the notice and the Registrar is still of the view that the holder is not a public authority or no longer exists, the Registrar will send on his or her own initiative a notice to the holder requesting evidence of the holder's public authority status with respect to all official marks listing the same holder.

Final assessment of the request

The final assessment of the request will be communicated to the holder and the requesting party, or their appointed trademark agents, if any.

The Registrar will act in accordance with the final assessment as soon as administratively possible if no appeal or judicial review is taken, the Registrar will act in accordance with the final judgment, as the case may be.

Disclaimer

This practice notice is intended to provide guidance on the Canadian Intellectual Property Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.