CIPO Update (Trademarks): New tool for challenging Official Marks in Canada

Earlier this month, on April 1, 2025, a new mechanism to challenge Official Marks in Canada – notoriously difficult to remove from the trademarks Register – came into effect. This new mechanism should prove to be a helpful tool to assist brand owners in overcoming objections to trademark applications on the basis of Official Marks. 

Previously, trademark owners had limited options for overcoming such objections since Official Marks are not subject to summary non-use cancellation or invalidity proceedings like regular trademarks and they do not need to be renewed so they can remain on the Register indefinitely – making them virtually unassailable.

If a trademark owner was unable to argue that its mark did not so nearly resemble the Official Mark so as to be likely to be mistaken for it, and the Official Mark holder was unwilling to give consent (or no longer existed), the only remaining option for brand owners to overcome an Official Mark citation was to apply to the Federal Court of Canada seeking to remove the Official Mark from the Register.

The new mechanism adds another more streamlined and cost-efficient option for brand owners who can now challenge an Official Mark on the basis that the Official Mark holder is not a public authority or no longer exists.  Under new subsection 9(4) of the Trademarks Act the Registrar may, on their own initiative or at the request of a person who pays the required fee (currently set at $325 CAD), give notice that an Official Mark no longer enjoys the protection of section 9(1)(n)(iii) of the Act, which essentially terminates its status as an Official Mark. 

Notably, this new mechanism only applies to badges, crests, emblems and marks that the Registrar has given public notice of adoption and use by a “public authority” in Canada as an Official Mark under subsection 9(1)(n)(iii) of the Trademarks Act, and does not apply to prohibited marks adopted by any “university” under subsection 9(1)(n)(ii). 

Further, the new mechanism does not include an option to challenge an Official Mark for non-use Unlike a summary non-use cancellation proceeding, the initial burden is on the party challenging the status of the Official Mark to provide information or evidence demonstrating that the Official Mark holder is not a public authority or no longer exists. Once a challenge to an Official Mark has been filed, the Registrar will then determine whether it is necessary to send a notice to the Official Mark holder requesting evidence of the holder’s public authority status (i.e. that it meets the two-part test of (1) being under governmental control and (2) offering a public benefit). 

According to the corresponding practice notice, the Registrar will generally not send a notice to the Official Mark holder requiring it to show its public authority status if: 

• the request to challenge the Official Mark was received within one year of the date the Registrar gave public notice of the adoption and use of the Official Mark; 
• the content of the request does not raise any doubt as to the Official Mark holder’s public authority status or existence; or
• the holder of the Official Mark is listed as His Majesty the King (or Her Majesty the Queen) in right of Canada or is a municipal government entity (among other reasons).

Conversely, however, if a request leads the Registrar to believe that the Official Mark holder is not a public authority or no longer exists, the Registrar will generally then send a notice to the Official Mark holder requesting evidence of their public authority status within three months from the date of the notice. If the Official Mark holder fails to respond or fails to provide sufficient evidence of its status as a public authority in Canada, then the Registrar will give public notice inactivating the Official Mark (subject to appeal or judicial review) and, notably, will also send a further notice to the Official Mark holder requesting evidence of its public authority status with respect to all its Official Marks.  

The introduction of this new mechanism to challenge Official Marks on the basis that the holder is not a public authority or no longer exists, provides brand owners with an efficient option to address the often-difficult obstacles presented by Official Marks.   

If you need any assistance, please contact a member of our trademarks team.

Previously, trademark owners had limited options for overcoming such objections since Official Marks are not subject to summary non-use cancellation or invalidity proceedings like regular trademarks and they do not need to be renewed so they can remain on the Register indefinitely – making them virtually unassailable.