Lottery Corp Re-branding Controversy

An article in today’s Globe and Mail has raised issues regarding the cost of re-branding an Ontario Government Corporation. One member of the Provincial assembly has raised concerns about the $4-6 million dollars spent changing the logo of the Ontario Lottery and Gaming Corp. from OLGC to simply OLC.

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Branding Canada: Official Marks

Noting an August 15th post on the Strategic Name Development Blog, which comments that Canada is a great brand but it needs marketing.

While we appreciate that trade-mark registration is only a small part of an overall branding and marketing campaign, it appears from the Canadian Trade-mark Register that the government organizations responsible for promoting tourism in Canada and its provinces and territories are taking steps towards developing a brand. For example, Tourism BC has a number of marks on the Canadian Trade-mark Register, including a number of variations of SUPER NATURAL BRITISH COLUMBIA. The Greater Vancouver Convention and Visitors Bureau has obtained 100 DAYS OF SUMMER, along with a number of other marks.

Other favourites include: Nunavut’s UNTAMED UNSPOILED UNDISCOVERED (which is not on the Trade-mark Register, however); Saskatchewan’s LAND OF LIVING SKIES; and Quebec’s PROVIDING EMOTIONS SINCE 1534 (FOURNISSEUR D’ÉMOTIONS DEPUIS 1534, if you prefer the French).

With the exception of UNTAMED UNSPOILED AND UNDISCOVERED, all these marks are registered as “Official Marks” under section 9(1)(n)(iii) of Canada’s Trade-marks Act, a provision that gives these “public authorities” an advantage over the average commercial enterprise seeking to register trade-marks. Registration of such marks does not involve an opposition process and does not require renewal. There are no fees to pay and no provisions regarding cancellation. The public authority may prohibit others from using the mark with all goods and services and not just those in respect of which the public authority can establish use. (For more details on official marks generally see this.) Government entities do not always resort to section 9(1)(n)(iii). The Canadian Tourism Commission has obtained Official Mark status for PURE CANADA and CANADA PUR, but has registered THE WORLD NEEDS MORE CANADA & Design as an ordinary trade-mark.

Given section 9, it is perhaps surprising that Canadians, and more particularly their public authorities, are not more aggressive about establishing brands, or at least trade-marks. We are still waiting for something as provocative as Australia’s SO WHERE THE BLOODY HELL ARE YOU?, or better yet, Las Vegas’ WHAT HAPPENS HERE, STAYS HERE.

Taco Time takes bite out of Vancouver restaurant

A Vancouver restaurant has received media coverage regarding its alleged trade-mark infringement and its fight against a major fast food chain. Apparently, the restaurant has been using the phrase “Taco Tuesday” for a promotion during the last year. Taco Time Canada Inc. is the registered owner in Canada of the trade-mark TACO TUESDAY and, not surprisingly, instructed its lawyers to send a cease and desist letter to the restaurant owners.

Trade-mark registration confers the exclusive right to the registered owner to use the mark throughout Canada in association with the wares or services claimed in the registration. In this case, Taco Time Canada Inc. registered its mark for use in association with restaurant services – about as clear a case of infringement as you’ll see. Although the media report once again portrays this as a “little guy” versus big corporation story, this is simply another example of a registered trade-mark owner policing use of its mark and its rights – as it must do.

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.

The Authors