Last week, the Supreme Court of Canada dismissed a leave to appeal from a Federal Court of Appeal decision that decided whether public authorities are immune from trademark infringement claims arising from use of their official marks. The Federal Court of Appeal decision had dismissed an appeal from a Federal Court judgment which found that a registered trademark owner enjoys the rights conferred under the Trademarks Act (the “Act”), regardless of whether a public authority is involved or not.
B.C. Company Files Trademark Claim Against Ontario Government
The company incorporated in 2009 and, beginning in April 2012, had delivered a program focusing on energy awareness, conservation, and efficiency, known as “Empower Me” (the “Empower Me Program”), in British Columbia.
The company had only operated the Empower Me Program in British Columbia, but intended to expand the program into Alberta and Ontario in 2018.
The company filed a trademark application with the Canadian Intellectual Property Office on April 12, 2013 for use of the mark “EMPOWER ME” in connection with its energy awareness, conservation, and efficiency services. Although the company had initially branded its program as “Empower Green”, it had been using “EMPOWER ME” as a trademark since April 20, 2013, when the mark was displayed at the company’s booth at a festival in Surrey, British Columbia. The registration sought by the company was granted on July 23, 2014. The company used the “EMPOWER ME” mark on its website, social media, various types of promotional materials, at booths at community cultural events, and in advertising in various publications. The mark had also been used under license by sponsors to promote the Empower Me Program. The mark was typically displayed, employing a combination of capital and lower case letters, as “EmPower Me”.
On November 27, 2013, the Government of Ontario (“Ontario”) announced that it was launching a website with the name “emPOWERme”, which was intended to help energy consumers in Ontario take charge of the power they use by better understanding the province’s electricity system.
The company became aware of Ontario’s website in November 2015. On December 15, 2015, the company wrote to Ontario, requesting that it cease and desist from use of the “Empower Me” mark. Ontario responded on February 18, 2016, taking the position that the content and promotion of its website had been limited to the province of Ontario and that it had not used the name “emPOWERme” for any commercial purposes. Ontario also pointed out that the Ontario Ministry of Energy was a public authority under the Act, which authorized it to request that the Registrar give public notice of its adoption and use of “emPOWERme” as an official mark of the Government of Ontario. The company followed up on August 10, 2016 with a letter from its counsel maintaining its position, and on October 26, 2016, it commenced a legal action.
Ontario subsequently sought official mark status for “emPOWERme”, by writing to the Registrar on December 19, 2016, requesting that the Registrar give public notice of adoption and use by the Ministry of Energy of “emPOWERme” as an official mark pursuant to s 9(1)(n) of the Act. The Registrar gave such public notice on January 10, 2018.
The company’s action against Ontario claimed damages and other relief for trademark infringement, passing off and depreciation of goodwill under the Act.
Courts Find in Favour of Company
At issue was s. 9(1)(n)(iii) of the Act, which states:
“9 (1) No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,[…]
(n) any badge, crest, emblem or mark […]
(iii) adopted and used by any public authority, in Canada as an official mark for goods or services,
in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use; […]”
The Federal Court found that s. 9(1)(n)(iii) of the Act did not insulate Ontario from claims under the Act. It therefore allowed the company’s claim for infringement under the Act, because the court found that Ontario’s mark was confusing with the company’s mark. The other claims failed, however, because the court found that they turned on the development by the company of goodwill in connection with its mark, which had been limited to the province of British Columbia and had not been affected by the use by Ontario of its mark in the province of Ontario. The court awarded the company $10,000 in damages.
Ontario appealed the decision, claiming that the mark it used was an official mark under subpara. 9(1)(n)(iii) of the Act and that the use of such a mark could not be held to be infringing because its status as an official mark was a complete defence to the company’s claim of infringement.
The Federal Court of Appeal dismissed Ontario’s appeal, stating that:
“Subpara. 9(1)(n)(iii) of the Act prohibits the use of a mark that has been “adopted and used by any public authority in Canada as an official mark for goods and services” where “the Registrar has, at the request…of the…public authority…given public notice of its adoption and use”. Textually, this allows public authorities to seek recourse against those who use an official mark. In no way does the text confer on the public authority any particular protection against claims for trademark infringement or other claims under the Act. A public authority that chooses to use a mark that is confusing to a registered trademark does so at its peril. Clear legislative wording would be required to effect a different result. We add that [Ontario] has not persuaded us that the context and purpose of the provision support a different interpretation.”
By refusing Ontario’s leave to appeal, the Supreme Court of Canada therefore confirmed the lower courts’ decisions.
Distinguishing your business from competitors is key to your success. You’ve worked hard to develop a recognizable brand or business and deserve to be the entity that profits from it. This can be done by obtaining a trademark. Trademarks allow customers to quickly and easily identify a brand or company and can be obtained in consultation with a knowledgeable trademark lawyer.
The highly skilled trademark agents and intellectual property lawyers at DBH Law can help protect your intellectual property and confidential information through a wide range of services including trademark and copyright registrations, sale and licensing agreements, and enforcement of trademarks.
We help our clients sort through the various options of intellectual property protection available to them and work to put a solution in place that protects their rights and ensures that their brand and innovation are secure.
Contact DBH Law if your business or brand has intellectual property you would like to protect. Our experienced trademark lawyers can work with you to create a solution customized for your unique business needs. We provide personal guidance and practical, reliable advice to mitigate your legal and financial risks. Contact us online or by phone at 403.252.9937 to schedule a consultation today.