Practice Notice - Archive: Public Authority Status under Sub-paragraph 9(1)(n)(iii), Publication Date: 1999-03-10

Public Authority Status under Sub-paragraph 9(1)(n)(iii)

Publication Date: 1999-03-10

Obligation To Evaluate Public Authority Status

The Registrar of Trade-marks will require evidence of public authority status on every request to publish an official mark pursuant to sub-paragraph 9(1)(n)(iii) of the Trade-marks Act. Authority for this position is found in Stadium Corporation of Ontario Ltd.v. Wagon-Wheel Concessions Ltd., [1989] 3 F. C. 132 (F.C.T.D.).

Test To Be Used To Evaluate Public Authority Status

The Registrar of Trade-marks will apply the two-part test, adopted by the Federal Court of Appeal (Registrar of Trade-marks v. Canadian Olympic Association (1982), 67 C.P.R. (2d) 59) and accepted in Stadium Corporation of Ontario Ltd. v. Wagon-Wheel Concessions Ltd., [1989] 3 F.C. 132 (F.C.T.D.) et Canadian Olympic Association v. Konica Canada Inc. And Brick Communications Ltd., [1990] 2 F.C. 703.

The two-part test is made up of the following elements:

  1. A sufficient degree of control must be exercised by the appropriate government over the activities of the body ; and
  2. Any profit earned by the body must be for the benefit of the public and not for any private benefit.

For example, with respect to the first element, it may be helpful for the Registrar to consider some or all of the five aspects of government control discussed in the Court of Appeal decision in Registrar of Trade-marks v. Canadian Olympic Association (1982), 67 C.P.R. 2d) 59:

  1. A certain degree of government control can be assumed from the fact that COA was incorporated as a non-profit association;
  2. In the event the COA surrenders its charter, its assets are to be disposed of by the Government of Canada in c-operation with the IOC;
  3. A substantial portion of the financing of the COA's activities is derived from the federal government;
  4. The fact that the federal government was able to prevail upon the COA not to participate in the 1980 Olympic Games was indicative of a substantial degree of government influence on the COA's decision making; and
  5. A close relationship between the COA, the Directorate of Fitness and Amateur Sport and Sport Canada was indicative of an element of control.

It is not suggested that this is an exhaustive list of criteria to establish sufficient government control, only that these are the types of control that the Registrar should look for in evaluating public authority status.

If the applicant provides only one of the above criteria, for example, its incorporation as a non-profit association, this would not seem to be sufficient to establish its public authority character. (See Big Sisters Association of Ontario and Big Sisters of Canada v. Big Brothers of Canada, 75 C.P.R. (3d) 177).

Note: The fee set out in Item 12 of the Tariff of Fees, that is payable on the filing of a request pursuant to paragraph 9(1)(n) or (n.1) of the Act, is considered to cover the work associated with creating the file and is therefore not transferable or refundable.