SCC Leave Denied: Public Authorities — Not Immune To Trademark Infringement Claims

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The Supreme Court of Canada has denied leave to appeal of the Ontario (Energy) v Quality Program Services Inc.1 Federal Court decision, thereby bringing finality to whether public authorities are immune to trademark infringement claims arising from use of their official marks. This Federal Court case law confirms that registered trademark owners will continue to enjoy the rights conferred upon them under the Trademarks Act (the “Act“), regardless of whether a public authority is involved and suggests that the strength of an official mark is greatly dependant on when public notice is given.

Quality Program Services Inc. (“QPS“) brought a Federal Court action against the Government of Ontario, specifically the Minister of Energy (the “MOE“), seeking damages and other relief for trademark infringement, passing off and depreciation of goodwill under the Act. QPS is the registered owner of the “EMPOWER ME” trademark, registered in 2014 in association with energy awareness, conservation, and efficiency services.2 In 2015, QPS became aware that the MOE had launched a website with the name/mark “emPOWERme” to educate Ontario residents about the province’s electricity system.3

After unsuccessful requests by QPS to have the MOE cease and desist from use of the “Empower Me” mark, QPS initiated its Federal Court action against the MOE. Subsequently, the MOE sought official mark status for its “emPOWERme” mark by requesting the Registrar of Trademarks to give public notice of adoption and use of its mark as an official mark pursuant to subsection 9(1)(n)(iii) of the Act. The Registrar gave such public notice in January 2018.4

At trial, the MOE argued that no claim under the Act could be made against it arising from its use of its official mark.5 The Federal Court rejected the MOE’s position that subsection 9(1)(n)(iii) provides a complete defence to an infringement claim and confirmed that the purpose of the provision is to enable public authorities to prohibit others from using their official marks once made public, not to provide statutory immunity to public authorities that contravene other provisions of the Act.6 The Court held that the MOE had infringed QPS’ registered mark contrary to Section 20 of the Act because its mark was confusing with QPS’ registered mark, but that QPS had failed to establish its passing off and depreciation of goodwill claims.7 The Court awarded QPS $10,000, in the absence of evidence to support quantification of damages.

The Federal Court of Appeal quickly dismissed the MOE’s appeal, substantially for the same reasons as the Federal Court.8 In addition, the Court of Appeal warned that “a public authority that chooses to use a mark that is confusing to a registered trademark does so at its peril”.9

These decisions highlight the importance of registering a mark as soon as practicable to ensure that the benefits of the Act are available.

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1 Ontario (Energy) v Quality Program Services Inc, 2020 FCA 53 [FCA Decision].

2 Quality Program Services Inc v Canada, 2018 FC 971 at paras 1 and 7.

3 Ibid at para 8.

4 Ibid at para 11.

5 Ibid at para 16.

6 Ibid at paras 18 and 29.

7 Ibid at para 57.

8 FCA Decisionsupra note 1 at para 3.

9 Ibid at para 4.

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