Putting Official Marks to the Test: Inactivating an Official Mark under Canada’s New Regime

The Canadian Trademarks Office recently issued its first decision under the new official mark inactivation mechanism, which resulted in the first successful inactivation of an official mark and an important development for trademark owners. The case initially stemmed from a trademark application filed by Circle Internet Holdings, Inc. (Circle) which received an objection under section 9 of the Canadian Trademarks Act based on an official mark held by the Bourse de Montreal, Inc. Circle was successfully represented by Marks & Clerk before the Canadian Trademarks Office under the new inactivation mechanism. Last year, the new mechanism for requesting the Trademarks Registrar to cancel (or “inactivate”) an official mark came into effect. Unique to Canada, official marks are not subject to the same restrictions as regular trademarks but may only be adopted and used by a “public authority” in Canada. For further details on the mechanism, you can take a look at our prior article here.

Previously, trademark owners had limited options for overcoming such objections since official marks can remain on the register indefinitely without needing to be renewed and are not subject to summary cancellation proceedings for non-use like for regular trademarks. 

In the case of our client, Circle (a prominent payments technology company based in the US), one of their Canadian trademark applications was objected based on an identical official mark held by Bourse de Montreal Inc. (a subsidiary of TMX Group Limited best known for its stock exchanges, including the Toronto Stock Exchange and Montreal Exchange). Absent consent from the official mark holder or reasonable arguments that the marks were sufficiently different in appearance, there was little recourse if not for the new mechanism.

Since the initial burden is on the party challenging the status of the official mark to demonstrate that the official mark holder is not a public authority in Canada, the key was to conduct a formal investigation of Bourse de Montreal Inc. and compile evidence to support that it was a for-profit company not subject to a significant degree of governmental control over its activities and therefore did not qualify as a “public authority” in Canada.

Ultimately, the evidence was clear and uncontested, which led to the first inactivation of an official mark under the new mechanism — with an official notice issued by the Registrar in February, and the deadline to appeal having passed in March – thus successfully clearing the path for Circle to register its trademark in Canada. 

This outcome in this case demonstrates how the new inactivation mechanism can be used to provide trademark owners with a meaningful avenue to challenge official marks that might otherwise present long‑standing barriers to registration, particularly where consent is unavailable and traditional arguments offer limited recourse.

If you or your client have received an objection to a trademark application in view of an official mark and need any assistance, please contact a member of our Canadian trademarks team.

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