Jan 2019 Charity & NFP Law Update
As previously reported in the November 2018 Charity & NFP Law Update, significant changes to Canada’s trademark laws will be coming into effect on June 17, 2019. While charities and not-for-profits should be cognizant of these changes, they should also be aware of additional changes coming to Canadian trademark law as a result of Bill C-86. As stated in the Legislation Update, above, the omnibus Bill C-86 received Royal Assent on December 13, 2018, and includes amendments to a wide variety of legislation, including the Trade-marks Act. The most significant amendments to the Trade-marks Act that will impact charities and not-for-profits are further discussed below.
Charities and not-for-profits that seek to enforce registered trademarks during the first three years of registration will be required to provide evidence of use of the trademarks in Canada (or have special circumstances justifying the non-use) in order to enforce the trademarks. In light of this change, trademark owners should ensure proper use of registered trademarks in accordance with the use requirements of the Trade-marks Act.
Perhaps the most significant change that will impact charities and not-for-profits is that the Registrar of Trademarks will have the authority to remove an official mark from the registry if the official mark owner is not a public authority or no longer exists. This change to the trademark regime will have large consequences on charities and not-for-profits that hold official marks.
Official marks are a unique and powerful form of intellectual property right. Although similar to trademarks in some respects, official marks are only granted to “public authorities” and owners of official marks are given extraordinary protection. Registered charities were generally able to obtain official marks until 2002 when the federal court tightened up the meaning of “public authority” to make it clear that status as a registered charity alone, is insufficient to constitute an organization as a public authority for the purpose of obtaining an official mark. As a result, despite the fact that official marks granted to charities are technically erroneously-issued, many of these official marks continue to sit on the trademarks database because with the current official mark regime, once an official mark is advertised, it remains on the trademarks register until it is either voluntarily withdrawn by the owner or struck from the register by a successful federal court action for judicial review. Both of these circumstances are very rare and, as a result, once an official mark is on the register, it is theoretically perpetual in duration.
However, the new amendments to the Trade-marks Act will provide an easy administrative process through which either the Registrar of Trademarks or any person can have an official mark invalidated if the entity that obtained the mark is not a public authority (which would catch registered charities) or no longer exists. As a result, official marks held by registered charities will be left vulnerable to attack and subject to removal once these provisions are in force. In taking steps to protect their intellectual property, charities and not-for-profits that have official marks should therefore immediately secure parallel registered trademarks for any official marks they currently have prior to these amendments coming into force.
As the above noted amendments to the Trade-marks Act do not have a set coming into force date, charities and not-for-profits should monitor the status of these amendments and in the meantime ensure that all trademarks are properly used and registered trademarks are secured for any official marks.