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RBS Wins Landmark Decision: Government Liable for Trademark Infringement

By: Jessie Skinnider

In a landmark case involving multiple levels of appeal, RBS successfully represented a Vancouver-based energy consulting business against the Government of Ontario for trademark infringement. The decision established that public bodies can also be held liable for trademark infringement when adopting an official mark that may be confused with a prior registered trademark.

Full overview below:

In Quality Program Services Inc. v. Ontario (Energy), 2018 FC 971, aff’d 2020 FCA 53 (leave to appeal to SCC denied), RBS LLP partner Jonathan M.S. Woolley successfully protected our client’s registered trademark “EMPOWER ME” from infringement by the Government of Ontario. The Government of Ontario was ordered to pay damages of $10,000 to Quality Program Services Inc. (QPS) on the basis that the Ontario Ministry of Energy’s campaign slogan “emPOWERme” and website launch of the same name was confusing with, and therefore infringed, QPS’s registered mark. The key issue in this decision was whether the Government of Ontario could become immune to an infringement claim by adopting QPS’s mark “emPOWERme” as an “official mark” of the government, even though it had been already registered by and accumulated goodwill associated with QPS.

Significance

Under the Trademark Act, government and public authorities are entitled to adopt particular marks as “official marks”. Once notice of the adoption is provided, these marks become removed from the realm of commerce, and any use of the official mark, or any mark confusing with it, becomes strictly prohibited. The trademark Registrar is not entitled to decline the registration of an official mark, no matter if it is confusing with, or even identical to, a company’s pre-existing trademark. Examples of symbols intended to be protected by “official mark” status include the Canadian flag and the crests of Crown corporations.

The case is a landmark decision, as it is the first time anyone has ever successfully defended its trademark against a government agency seeking “official mark” or “super trademark” status for the same mark. The Federal Court of Appeal not only upheld the lower court’s decision and sided with QPS, it sent the strong message that “a public authority that  chooses to use a mark that is confusing to a registered trademark does so at  its peril”. As this case illustrates, official marks are controversial. They offer extremely broad protections, with few limitations. This decision changed the law by delineating the limitations of official mark protection.

The decision is significant to trademark and intellectual property professionals, and has received media attention. For example, CBC article “Move to ’emPOWER’ Ontario energy consumers ends in $10K trademark confusion”. https://www.cbc.ca/news/canada/british-columbia/power-trademark-ontario-slogan-1.4867595.

Factual Background

QPS is a BC company that originated and used the phrase “EMPOWER ME” in connection with energy awareness since 2013, when the mark was displayed at QPS’s booth at a festival in Surrey, BC. The trademark application for exclusive use of the mark was granted by the Canadian Intellectual Property Office on July 23, 2014.

In 2015, QPS became aware of the Government of Ontario’s website using the name “emPOWERme” in connection with a campaign to educate Ontario residents about Ontario’s energy system and energy conservation. QPS wrote to the Government of Ontario, requesting that it cease and desist its use of the mark. The Government of Ontario refused. Subsequently, it attempted to adopt PQS’s mark “emPOWERme” as an official mark of the government pursuant to s. 9(1)(n) of the Trademark Act.

The Federal Court found that QPS owned the trademark EMPOWER ME for use in association with energy awareness, conservation and efficiency services, and that QPS has the exclusive right to the use of such trademark not only in BC, but throughout Canada. The Government of Ontario had wrongfully infringed QPS’s trademark, contrary to the Trademark Act. The adoption of an official mark is powerful as it prohibits use by others, but does not go as far to protecting the government agency from itself contravening the Act, nor does it eliminate rights already conferred upon the owner of a registered trademark.

As a result, the Government of Ontario was ordered to pay $10,000 in damages to QPS. The Government of Ontario was unsuccessful in challenging the decision in the Federal Court of Appeal. The Supreme Court of Canada refused to grant leave to appeal, effectively solidifying QPS’s win in the lower courts.

More Information

At RBS, we have a knowledgeable and experienced group of trademark agents and lawyers who manage all aspects of trademark portfolios in Canada, the USA, and around the world. For more information on protecting your trademark, or for general inquiries about trademark registration, please contact our Technology & Innovation Practice Group Leader Sze-Mei Young at syeung@rbs.ca.

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