By Sepal Bonni and Cameron A. Axford

Charities and not-for-profits that hold official marks under Canada’s Trademarks Act should take note of significant legislative changes coming into force on April 1, 2025. These amendments, long anticipated in Canada’s intellectual property landscape, and previously discussed in the March 2023 Charity & NFP Law Update, will create new vulnerabilities for organizations that rely on official marks to protect their branding. While broader trademark reforms are also taking effect, the revisions to official marks are particularly critical for charities and not-for-profits who have often relied on them. Organizations relying on official marks to protect their brand and reputation should review their portfolios now to mitigate the risk of losing trademark protection that has historically been almost impossible to challenge.

Under the current regime, official marks grant expansive protection. These marks, issued to public authorities, have long been considered "super-marks," enjoying broad rights that prevent others from adopting a mark that is likely to be mistaken for an official mark. Unlike regular registered trademarks, official marks do not require renewal, are not subject to non-use cancellation or opposition proceedings, and do not specify associated goods and services, making them an attractive option for public authorities

In the past, registered charities have obtained official marks on the basis of being a “public authority”. However, in 2002, the Federal Court made it clear that status as a registered charity alone is insufficient to qualify as a public authority for the purpose of obtaining an official mark, and that the test to determine if an organization qualifies as a public authority requires that: (1) a significant degree of control is exercised by the appropriate government over the activities of the body; and (2) the activities of the body benefit the public. Given the Federal Court’s strict test of what constitutes a public authority, most charities that may have formerly qualified as a public authority for registration purposes no longer do.

However, even though these charities no longer qualify, their official marks still remain active. Even if the charities that own the official marks no longer exist, the official marks continue to remain active. This is because with the current official mark regime, once an official mark is approved, 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 often perpetual in duration. Even though the charities’ official mark cannot technically be enforced against third parties, the current regime is of benefit to these organizations given that their official marks continue to exist on the registry and therefore block applicants of confusingly similar trademarks. This often creates an issue for new applicants who wish to register trademarks that are blocked by official marks.

Starting April 1, 2025, new provisions to Canadian trademark legislation will provide a new mechanism for the Trademarks Registrar to give public notice that an official mark is invalid where the official mark holder is not a public authority or no longer exists. This can be done either at the Registrar’s own initiative or in response to a request from a third party for a fee of $325 CAD. This will catch many charities that currently hold official marks and provide a simple and cost-effective avenue for third parties to challenge official marks that are potentially blocking their trademark applications from proceeding.

For charities and not-for-profits that currently rely on official marks but do not qualify as public authorities, these changes could have far-reaching consequences. Ahead of April 1, 2025, charities that own official marks should carefully review their portfolios and assess whether their status as a 'public authority' – and therefore the validity of their official marks – may be open to challenge. Where vulnerabilities exist, filing new applications for regular trademarks is an important and prudent strategy to protect their trademarks.

These changes align with the federal government's broader efforts to modernize Canada’s trademark system and prevent abuse of intellectual property protections. While other amendments coming into force on April 1, such as proof-of-use requirements for trademark enforcement and new cost award powers for the Trademarks Opposition Board, are notable, the reforms to official marks stand out as having significant impact on charities and not-for-profits.

Given the substantial implications of these changes, charities and not-for-profits should take proactive steps to safeguard their brand protections before the new regulations take effect or as soon as possible thereafter.

​Read the March 2025 Charity & NFP Law Update