- by Stacey Jessiman -
Since time immemorial, First Nation artistic creations have been important means of displaying traditions and histories and asserting rights. Your nation’s official logo is likely already a successful display to the world of your nation’s particular traditions, history and strength of community. If your nation uses that logo on its business marketing materials and products, that logo may already be a recognized symbol of its business and products – and thus is valuable to your business(es). Now the important thing to consider is whether your nation is effectively asserting and protecting its rights to the valuable intellectual property in its logo.
One way to ensure that protection is for your nation to register its official logo as an Official Mark under the Trade-marks Act R.S.C, 1985, c. T-13 (the “Act”).
Official Marks are governed by section 9 of the Act. A key distinguishing factor between an Official Mark and a trademark is that Official Mark designation is available exclusively to a Canadian public authority such as government organizations or agencies at the federal, provincial or municipal levels. As Canada already recognizes First Nations as public authorities, your nation can take advantage of the fast process of registering an Official Mark and achieve broad protection for its logo.
Why Register an Official Mark Rather than a Trademark?
To pass the Registrar’s test for Official Mark designation, the registering party has to qualify as a “public authority in Canada” and provide evidence that they have adopted and are using the Official Mark. Once these conditions are satisfied, the Registrar will publish notice of the Official Mark in the Trade-marks Journal. Unlike a trademark, an Official Mark does not go through an examination process by the Registrar and is not open to third-party opposition proceedings. In addition, unlike trademark registrations, there is no need to:
identify any goods and services in association with which your nation has adopted and used the official mark.
identify the date that the nation first used its official mark. (In fact, if a third party applies to register a similar trademark that it adopted and used before your nation adopted and used its official mark, your registration takes precedence.)
Another bonus of registering an official mark is that the registration is perpetual and does not need to be renewed. And, the Registrar has little ground to refuse an application for an official mark as long as the applicant is a qualified Canadian public authority.
The rights of owners of published official marks are extremely broad. Once an official mark is published, no one may adopt or use any logo or mark that resembles the official mark in connection with a business, as a trademark or otherwise.
Nations often use a distinctive symbol when they engage in a variety of business and services from IT and retail to intellectual property and all forms of publication. If your nation’s symbol, as displayed on your nation’s website and elsewhere, is registered as an official mark under the Act, no other persons can register a mark that resembles your logo in association with their goods and services. Thus, registering an official mark is one way to protect your nation’s corporate image and ensure that its business cannot be confused with another business.
Do we Need to Register our Logo as an Official Mark?
Your nation is not obliged to register its logo as an official mark. By using its logo in association with goods and services for a certain length of time, it may have acquired common law rights to protection of that use. However, registering your nation’s logo as an official mark can help avoid a long, expensive legal battle over who has the right to use the mark. Official mark registration is considered to be direct evidence of ownership. Further, registering an official mark will block any subsequent applications to register a confusingly similar mark as an official mark or trademark.
The process to register an official mark is fairly simple, and Jessiman Law can help you submit your application. As your submitting party, Jessiman Law will go through the process with you, ensure that all forms and required supporting documents are in order, and provide the evidence that the Registrar requires to register your mark. Our lawyers have experience with registering official marks for First Nations and can ensure this process goes smoothly and easily.
Registering a First Nation Business Group Logo as a Trademark
If your nation’s business group has its own logo different from your nation’s official logo, you can protect it also by registering it as a trademark under the Act. Trademark application processes in Canada take longer than official mark registrations – typically they take between 18 to 24 months. The process involves four steps:
Application Filing – of a complete and detailed trademark application.
Examination Process – the Registrar reviews the application and searches the trademark database for similar existing trademarks.
Publication and Opposition – the Registrar advertises the proposed trademark in the Trademarks Journal, giving others a chance to object to the marks before they are registered. If the Registrar allows an opposition, the opposition proceedings are adversarial in nature and similar to court proceedings and include filing evidence and written representations, cross-examining the evidence of the other party and appearing at an oral hearing.
Registration – the Registrar enters the trademark in the Register of Trademarks.
Once your nation’s business group’s logo is registered as a trademark, you are better able to defend your ownership rights if you find someone is using your mark without your permission.
For more information, contact Jessiman Law
 http://www.mondaq.com/canada/x/726486/Trademark/IP+QA+How+To+Navigate+Canadas+Official+Marks+System  http://www.mondaq.com/canada/x/726486/Trademark/IP+QA+How+To+Navigate+Canadas+Official+Marks+System