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Registering Your Nonprofit Trade-mark
by Terrance S. Carter
September 17, 1997; Canadian FundRaiser
While one trade-mark application can cover both wares and services, you must file a separate application for each trade-mark. The basis of your application will be to cover existing use, proposed use, use and registration abroad, or making the mark known in Canada. You should file the application as quickly as possible after the decision is made to go for protection, especially in cases where the trade-mark is a proposed mark with the priority date being the date of filing, rather than the date of first use.
The scope for amendments to your application are very limited, so it is important to ensure that the contents of the original application are complete and properly prepared, and professional counsel is very advisable at this stage.
The Trade-marks Office will assign your application a serial number and filing date, and begin its examination procedures. It will check for your entitlement and compliance with the formal requirements, and will search the trade-mark register for confusing or similar marks. It will then notify you of the mark's approval or rejection, in the latter case based on objections such as:

it is confusing with an existing mark
it must be (and has not been) described in ordinary commercial terms • it is "clearly descriptive" or "deceptively misdescriptive"
it requires a disclaimer
Once the Trade-marks Office has responded and the objections complied with, the mark is advertised in the Trade-Marks Journal, which is published weekly, and anyone can file an opposition to the registration within two months of the date of publication. If there is no opposition, you will be sent a Notice of Allowance, at which point you have six months to pay the $200 registration fee and provide a Declaration of Use. Eventually, a certificate of registration will be issued to you.
Once registered, your trade-mark is valid for 15 years, at which point it must be renewed. The trade-mark agent will remind you of the expiry date, but of course you must keep them informed of any address or name changes.
Importance of foreign trade-mark registration
Each country requires a separate registration, but member countries to the International Trade-mark "Convention" can claim the priority date in their own territory as the filing date in any other "Convention" country. In such situations, you will need to retain a trade-mark agent in the foreign jurisdictions, and carry out a trade-mark registerability search.
Extra protection with a Section 9 Official Mark
Part of Section 9 of the Trade-marks Act prohibits anyone else from using an Official Mark in association with any wares or services whatsoever in Canada. The catch is that Official Marks are only available to what the government refers to as ( but does not define), "Public Authorities." No rigid tests have been established, but case law has determined that to be eligible for this status, the entity must be nonprofit, there must be some evidence of a public benefit, and there must be some degree of government financial support. The latter can be demonstrated simply by virtue of the grant of charitable status by Revenue Canada, and establishing government control can also be very straightforward.
The advantages of a Section 9 Official Mark are significant:

the test for a mark does not require a comparison of goods or services, as is necessary under a test for a registered trade-mark;
it allows the owner to prohibit the use of the mark by anyone else, but it does not allow for a claim of damages;
it costs about one-half as much;
aside from confirmation that the applicant is a Public Authority, no detailed examinations are required;
there are no renewal fees and no procedures to expunge the mark; and
it can be indirectly licensed similar to a trade-mark, consenting to its use.
Section 9 Notices have become widely used in the last ten years, and as a result may be subject to statutory changes or limitations to restrict their use. If you may be eligible for this type of protection, it would thus be prudent to obtain Section 9 protection as soon as possible, while it is still available. Some of the organizations that have recently published Section 9 Notices include the Ontario Minor Hockey Association, the Alzheimer's Society of Canada, Canadian Baptist Ministries, Anne of Green Gables Licensing Authority, the Ontario Society for Crippled Children, and The Hutterite Brethren Church.
Both registered and unregistered Trade-marks are a type of property, and the rights in them can be sold or transferred, by means of an assignment agreement. In the case of a registered trade-mark, you must notify the Trade-marks Office of an assignment.
Trade-mark and Internet Domain names
Only a limited number of Internet Domain names are available, so if you are interested in obtaining a Domain name, you should act as soon as possible. Before obtaining the Domain name, however, you should have a trade-mark search to avoid trade-mark infringement. Once you know that infringement is not a problem, you may have to try more than one of the suffixes in use - .com, .org, .edu. .ca - in order to find a name/suffix combination that is available.
At this point, you will need to insulate the Domain name you have chosen, by obtaining a trade-mark registration either in Canada or some other jurisdiction before a challenge is made to the name. Canadian registration is preferable, but depending on your situation, foreign registration may be advisable in the short term.
You can challenge an existing Domain name by obtaining a trade-mark registration with a date of first usage prior to the activation date of the existing Domain name. You must, however, wait until trade-mark registration is in place, and only then give notice of your challenge to the other party and to Network Solutions Inc.
Terrance Carter is a partner in Wardlaw, Mullin, Carter & Thwaites, 235 Broadway Ave., Orangeville, Ontario L9W 2Z5. Telephone (519) 941-1760, fax (519) 941-3688.