Oily Loonie offside Official Mark?

Dogwood Initiative, a British Columbia environmental group, is facing legal action from the Royal Canadian Mint over a campaign to add one million oily loon decals to loonies in circulation.  (For our international readers, “loonie” is the commonly used term used to refer to the Canadian one dollar coin.)  Dogwood’s campaign is intended to create awareness about the risks of oil tanker traffic on BC’s north central coast, in the hopes that legislation might be passed banning such traffic.

The Royal Canadian Mint has alleged Dogwood Initiative’s activities bring it offside the Currency Act, but query whether the Mint may also have an action under the Canadian Trade-marks Act (the "Act"), for infringement of the Mint’s Official Mark rights in the loonie.

Section 9 of the Act deals with Official Marks, and in particular, it prohibits the adoption in connection with a business, as a trade-mark or otherwise, of any mark which consists of, or so nearly resembles as to be mistaken for, an Official Mark.

Once an Official Mark is adopted and used by a public authority (and the authority directs the Registrar to provide public notice of its adoption and use of the mark) the Official Mark holder obtains a broad passel of rights.  For example, Official Mark holders enjoy exclusive use of their mark for all wares and services, not needing to file a list of wares and services used in association their marks.  In addition, Official Marks do not need to be renewed and can only be challenged through an application for judicial review.  If a trade-mark which consists of, or so nearly resembles an Official Mark so as to be mistaken therefor is introduced to the marketplace after an Official Mark, that trade-mark may only co-exist with the Official Mark if consent is granted by the Official Mark owner.  This is an unlikely in circumstances such as these where legal action has been threatened.

While it is unclear whether the endeavours of the Dogwood Initiative or the businesses that signed on to assist in distributing the oily loonie would meet the definition of "business" as described in the Official Mark prohibition, we’d give our bottom dollar to know whether any further legal steps taken by the Mint will include a claim under the Act.

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About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

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