Trademark Application Denied? The Risk of Canada's "Prohibited Marks"

For entrepreneurs and businesses expanding into Canada, the Canadian Intellectual Property Office (CIPO) presents two primary hurdles for trademark registration: the risk of confusion with existing marks (Paragraph 12(1)(d)) and the risk of the mark being clearly descriptive (Paragraph 12(1)(b)).

However, an often-underestimated third category—Prohibited Marks—can result in an immediate, non-negotiable rejection of your trademark application.

Paragraph 12(1)(e) of the Trademarks Act mandates that a trademark cannot be registered if it consists of, or nearly resembles, a prohibited mark under Section 9 or Section 10 of the Act. This section is designed to protect state authority, public interest, and cultural symbols.

Understanding these prohibited categories is crucial, as they require specialized, non-standard searches and a deep understanding of Canadian administrative law.

Category 1: Protecting Official Emblems and State Authority (Section 9(1)(a) through (j))

The Canadian government strictly reserves the use of national symbols, military insignia, and certain international emblems. Using any of these, or a mark that is highly similar to them, will lead to refusal.

Royal and Government Marks (9(1)(a), (b), (c))

You cannot register a trademark that incorporates any of the following:

• The Royal Arms, crests, or standard, or the Arms or Crest of any member of the Royal Family.

• The official marks of a Governor General or Lieutenant Governor.

• The Parliament Hill Flag or other official government arms and seals.

Military, Intergovernmental, and Convention Marks (9(1)(d), (e), (i))

Prohibitions extend to symbols used by the Canadian Armed Forces and marks protected by international treaty obligations:

• Military Signs: Any badge, crest, or emblem adopted and used by the Canadian Forces.

• Intergovernmental Organizations: The arms, crest, or emblem of any intergovernmental organization (e.g., the UN, NATO, WHO) as long as Canada is a member.

• Paris Convention Emblems: National flags and other State emblems, official control/warranty signs, and the emblems of countries that are part of the Paris Convention.

Public Safety and Inspection Marks (9(1)(f), (j))

Marks intended to signify public certification or safety are reserved for public use:

• Official Inspection/Warranty Marks: Any mark adopted and used by a public authority for the purpose of certifying the goods or services.

• Reserved Symbols: The Red Cross, Red Crescent, and Red Crystal symbols of the Geneva Conventions are explicitly prohibited.

Category 2: The “Official Marks” Trap of Public Authorities (9(1)(h), (h.1))

This category represents the single greatest hidden risk for applicants. An Official Mark is a special mark adopted and publicly used by a Canadian public authority (which can be a government body, university, or even a public utility).

Unlike standard trademark rights, which are limited by confusing goods or services, an Official Mark objection under Section 9(1)(n) or (n.1) is a complete bar to registration if your mark is confusingly similar, regardless of whether your goods or services are related to those of the public authority.

Key Implications:

• Perpetual Bar: Once adopted, a mark is protected indefinitely.

• Specialized Searching: Official Marks are published in the Canadian Trademarks Journal, but they are often difficult to locate through standard commercial trademark databases, necessitating specialized legal research.

Category 3: Protecting Reputation, Personality, and Public Trust (9(1)(k), (l), (o))

This category prevents businesses from exploiting the public trust, reputation, or identity of others.

False Association with People or Events (9(1)(k))

This is a subjective test that requires CIPO to determine if the public would be misled. You cannot register a mark that falsely suggests a connection with:

• A Living Individual or an individual who has died within the preceding 30 years.

• An Institution or Event of Significant Public Reputation. This often applies to major sporting events, cultural organizations, or charitable foundations.

  • Musical Bands (4.7.7.3): A band name is subject to this rule if it has a significant public reputation in Canada. Using a similar name would falsely suggest the goods or services are associated with the musical group.

Protected Professional Designations (9(1)(l))

The names and symbols of specific professional associations (e.g., those for physicians, lawyers, or engineers) are protected to ensure only licensed or authorized individuals use them.

Portraits and Signatures (9(1)(o))

If your trademark includes the portrait or signature of a living or recently deceased individual, you must provide CIPO with written consent from that person or their legal representative.

Category 4: Geographical and Descriptive Indicators (10, 10.1, 12(1)(g), (h), (h.1))

These sections aim to prevent a single company from monopolizing terms that should be free for all traders to use.

Public Designations (Section 10)

A mark is prohibited if, by ordinary commercial usage, it has become recognized in Canada as designating the kind, quality, quantity, or origin of the goods or services. For example, a term widely used to describe a certain type of fabric cannot be trademarked for clothing made of that fabric.

Protected Geographical Indications (PGIs)

Canada protects geographical indications for certain products:

• Wines and Spirits (12(1)(g), (h)): A PGI (like "Champagne") cannot be registered for wines or spirits that do not originate in the indicated territory.

• Agricultural Products and Food (12(1)(h.1)): The same rule applies to protected geographical indications for food items (e.g., certain types of cheese or meat).

Plant Variety Denominations (12(1)(f) and Section 10.1)

The registered name of a plant variety cannot be used as a trademark for that variety or for other plant varieties of the same species.

The Legal Lifeline: Overcoming a Prohibited Mark Objection

While a Section 9 or 10 objection is severe, it is not always a definitive end to your application. Our strategic approach focuses on two key exceptions:

1. Consent (Paragraph 9(2)(a)): In some cases (particularly with Official Marks or false association claims), the objection can be overcome if you obtain the written consent of the relevant public authority, person, or organization. Securing this consent requires skillful negotiation and formal documentation.

2. Challenging Similarity (Paragraph 9(2)(b)): If the objection is based on a confusing resemblance to a protected mark, we can present legal arguments demonstrating that the resemblance is not close enough to likely be mistaken for the prohibited symbol.

Filing a trademark application without a specialized, comprehensive clearance search covering Section 9 and 10 is a high-risk gamble. You may spend months and thousands of dollars only to be rejected for using a symbol you were legally forbidden to use from the start.

Don't leave your brand vulnerable to hidden legal obstacles. Alphabetica Law specializes in comprehensive Canadian trademark clearance, ensuring your mark is legally sound against all criteria, including the complex landscape of Prohibited Marks.