The July 11, 2016 decision of Starbucks (HK) Limited v Trinity Television Inc. (“Starbucks”) provides a helpful reminder to charities holding official marks to file regular trademark applications in order to mitigate the potential risk of official marks being challenged and invalidated.
Official marks are a unique and powerful form of intellectual property right. Although similar to trademarks in some respects, official marks (often referred to as “section 9 marks” as they are protected under section 9 of the Trademarks Act) are only granted to “public authorities” and owners of official marks are given extraordinary protection. Most importantly, an official mark can prevent any person from registering a trademark that is likely to be mistaken for the official mark, regardless of the associated goods or services. Prior to 2002, Canadian registered charities were generally able to obtain official marks. However, due to the broad powers that are provided to owners of these marks, there was considerable litigation in 2002 to determine the type of entity that qualifies as a “public authority”, thereby being entitled to obtain an official mark. As a result of this litigation, the ability for registered charities to obtain official marks was generally curtailed. The Federal Court held that to qualify as a public authority: (1) a significant degree of control must be exercised by the appropriate government over the activities of the body; and (2) the activities of the body must benefit the public, and as a result, status as a registered charity alone, is insufficient to constitute an organization as a public authority for the purpose of obtaining an official mark. Most recently in Starbucks, the Federal Court relied on the 2002 cases and again confirmed that status as a charity does not, in and of itself, mean that the organization is a public authority.
In this case, Starbucks (HK) Limited (“Starbucks (HK)”) filed an application for the trademark NOWTV & DESIGN on October 24, 2013. The Trademarks Office objected to the application and cited NOWTV, an official mark granted to Trinity Television Inc. (“Trinity”) in 2001 against the Starbucks (HK) application. In 2001 when the official mark was granted, Trinity was a registered charity, producing and distributing programs conveying Christian teachings. In order to get around this official mark objection, Starbucks (HK) brought an application in the Federal Court for judicial review challenging the 2001 decision to grant Trinity the NOWTV official mark based on the argument that Trinity was not a public authority. In coming to the Starbucks decision, the Federal Court relied on the 2002 cases and the public authority test and as a result, the Court invalidated the official mark, thereby allowing Starbucks (HK) to move forward with its application to register NOW TV & Design.
It is important to note that Starbucks was an uncontested decision. However, it appears unlikely that Trinity’s participation would have changed the decision given that the Federal Court did not hesitate in coming to the conclusion that Trinity is not a public authority and stating that “it would be patently unfair and completely contrary to the interest of justice if an entity that is not a public authority was permitted to enjoy the exceptional rights conferred on the holder of an official mark.”
Many charities are surprised to learn that an official mark obtained in the past is not in fact a registered trademark, and may not be enforceable if challenged. Based on the recent reminder by the Federal Court in Starbucks, charities would be well advised to take immediate steps to ensure brands are adequately protected by registering regular trademarks for all official marks.
For further information on the difference between trademarks and official marks see Charity Law Bulletin No. 18 and Charity Law Bulletin No. 43.