Section 9 official marks offer those entities entitled to this special form of protection significant rights over regular trademark registrations.

Under Section 9(1)(n)(iii), the “public authority” which has its mark published under this provision obtains broad coverage for all goods and services, regardless of how the mark is used, and the official mark is not subject to either opposition or to any renewal requirements.

Accordingly, when regular trademark applicants receive objections based on Section 9 marks, these objections are often fatal, barring situations where the Section 9 rights holder is prepared to grant a consent to the registration.

Trademark applicants are therefore often anxious to discover ways to counter such objections. One method is to remove the official mark by way of judicial review, by establishing that the holder of the Section 9 mark did not or no longer meets the requirements for holding the rights.

In one recent example, this challenge was successful. In Starbucks (HK) Limited v. Trinity Television Inc., 2016 FC 790 (CanLII), the Section 9 mark for NOWTV had been obtained in 2001 on the basis that the applicant was a charitable organization. On the judicial review, it was held that simply being a charitable organization did not result in the applicant from meeting the requirements to establish that it is a “public authority”. The Federal Court therefore held that the Registrar’s decision to publish the official mark had been unreasonable, in the absence of evidence showing both that the applicant was subject to significant governmental control, in addition to being engaged in activities that benefit the public. The official mark was therefore quashed and set aside.

This case illustrates an option for trademark owners seeking to register marks which are close to official marks which may no longer meet the criteria to establish that they are owned by a “public authority”.