Official Marks and Kermode Bears

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image002.gifThe Kermode bear is a rare species of Canadian black bear, native to the beautiful province of British Columbia.

The recent case of City of Terrace v Canadian Pacific Phytoplankton Ltd., 2013 TMOB 156 brings the iconic animal into the realm of trade-mark law. The City of Terrace, B.C. is the owner of the official mark KERMODE BEAR and the City opposed the application for the KERMODE WARRIOR design mark (at left), applied for by Canadian Pacific Phytoplankton Ltd. An official mark is, in its own turn, a rare species of Canadian trade-mark which, under Section 9 of the Trade-marks Act, is accorded special rights and remedies. Public authorities such as governments and universities can give notice of the adoption of an “official mark”, after which it cannot be used or registered as a trade-mark by others. Think of government coats of arms, university names and crests, that sort of thing. In this case, the official mark claimed by the City of Terrace is comprised of the words KERMODE BEAR, and the City opposed the trade-mark KERMODE WARRIOR for various consumer products, such as dietary supplements, beverages and shampoos.

The Court said: “As stated in section 9(1)(n)(iii) of the Act, the test to be applied is whether or not the Applicant’s mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. The case law has interpreted “consisting of” in section 9 to mean “identical to”. Regarding the resemblance test set out in section 9, the case law indicates that it should be applied as a matter of first impression and imperfect recollection…”

The Court came to the conclusion that the marks were not identical, and the opposition was rejected.

In this case, the official marks did not prevail, and the KERMODE WARRIOR applications were allowed to proceed.