On August 29, 2014, the Federal Court re-affirmed its previous decision that a registered charity, in itself does not constitute a “public authority” for purposes of registering an official mark under the Trade-marks Act.
The Federal Court made the following comments regarding the definition of “public authority” for purposes of subparagraph 9(1)(n)(iii) of the Trade-marks Act:
“… being incorporated as a non-profit corporation with charitable objects, having obtained tax-exempt status, and having the ability to issue charitable receipts to donors was in law, insufficient to constitute that party a “public authority.”
To determine whether a party is a “public authority”, a two-part test is used:
If the party is subject to a significant degree of governmental control; and
The extent to which the organization’s activities benefit the public.
The particular facts of the case did not support the finding of “ongoing government supervision” nor “significant governmental control” of the Respondent’s activities.
If you thought as a charity that you could protect your trade marks by using the official marks provision you may need to reconsider and potentially apply for a regular trade mark.
Here is the full case http://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/73172/index.do
The first case I saw on this issue was Chosen People Ministries v. Canadian Jewish Congress, 2003 FCA 272 which dealt with a Christian group who had claimed an Official Mark of the "Menorah Design". Canadian Jewish Congress successfully rebuffed their claim. The Court found that "We are of the view that there is no government control over the carrying out of CPM's activities in pursuit of these objects or in the way they conduct their affairs in pursuit of these objects. The fact that CPM, as a charity, is obliged to comply, as are all other charities, with the law generally relating to charities, including the Income Tax Act does not, in our view, give rise to sufficient government control to qualify CPM as a public authority."
Do you require legal advice with respect to Canadian or Ontario non-profits or charities?
Mark Blumberg is a partner at the law firm of Blumberg Segal LLP in Toronto and works almost exclusively in the areas of non-profit and charity law.