Officially Infringing — Court Empowers Plaintiff Against Official Mark Owner

The Federal Court's recent decision in Quality Program Services Inc. v. Her Majesty the Queen in Right of Ontario as Represented by the Minister of Energy (2018 FC 971) adds further clarification to the impact of marks protected under s. 9(1)(n) of the Trademarks Act—an alternative to regular trademark protection available to public authorities, universities, and the Armed Forces—by finding that ownership of a published official mark is not a defence to an infringement claim. Mr. Justice Southcott held that the Province of Ontario's adoption and use of the mark emPOWERme infringed the Plaintiff's, Quality Program Services' (“QPS”), registered trademark EMPOWER ME, and awarded it $10,000 in damages. In the course of analyzing the issues, the Judge offered additional comments, several in obiter, on a range of subjects including how local reputation impacts depreciation of goodwill, the definition of “use” for services, the necessity of “commercial” activities for such use, survey evidence, and the quantum of damages when there is no specific evidence of loss. The decision illustrates one of many pitfalls of the s. 9 mark system even if found to infringe a registered mark or be unenforceable, the Court has no power to cancel or expunge a published s. 9 mark, because such marks are not formally “on the Register”, and unless withdrawn by the owner, they remain “published”, and a continuing obstacle to registration and use by others in the future.

At issue in Quality Program Services was a dispute between the owner of the registered trademark EMPOWER ME against an Ontario government entity who had sought protection for emPOWERme by requesting the Registrar to publish it as anofficial mark, pursuant to s. 9(1)(n) of the Trademarks Act. Once such notice is given, no other person may, without consent, adopt, use or register any mark in connection with a business that is the same as, or so nearly resembling the protected mark as to be likely to be mistaken for it. The request for publication does not need to identify any goods or services. In fact, once published, the mark is indexed on the Canadian Trademarks Database (using the odd status ofadvertised) as if it covers all goods and services. Section 9 marks are not subject to opposition proceedings, renewal, non-use cancellation, or expungement, and the Courts cannot specifically order that a s. 9 mark publication be cancelled or withdrawn. Such broad rights in turn lead to the potential for abuse...