Official Marks - FAQ 

A note from the Intellectual Property Centre of Excellence (IPCOE, CFOB)

These FAQs are a general and high-level overview of official marks. Limits on official marks established by the Trademarks Act make this a complex area. Contact the IPCOE to discuss any real case.

The Trademarks Act establishes the parameters of official marks, including what they are, how a public authority like ESDC may create them and what those organizations may do to protect them.

Official marks give Employment and Social Development Canada (ESDC) a way to help protect program and service integrity. The Trademarks Act permits ESDC to set aside marks (think logos, words, initials, graphics, designs, colours), for the Department’s own use. Setting aside these marks prohibits anyone else from beginning to use them for their own purposes.

  • 1. What is an official mark?

    An official mark can be almost any word, phrase, acronym, design or graphic. ESDC can create an official mark by writing to the Canadian Intellectual Property Office (CIPO). The new mark is then tracked in the CIPO database. For a detailed definition, see ESDC’s Intellectual Property (IP) Management Policy. IPCOE has posted a List of ESDC official marks.

    • A. Must official marks have a visual aspect? Can they be words or acronyms?

      Registering a visual aspect is best (such as an easy-to-remember logo). However, official marks can be just words, acronyms or symbols. When creating an Official Mark, avoid choosing plain words that people use every day (think "Pension Advice," a poor example, versus "CPP Official Pension Advisors," a good one). Avoid choosing ordinary descriptive words, which may already be used by businesses (think "Ice Cold Ice Cream," a poor example, versus "Fantastic Fran’s Fruitee Ice Cream," a good one). It is important to consider that protection is not retroactive, but future-oriented. ESDC should do its best to create marks that do not leave loopholes for any pre-existing businesses.

    • B. Examples of ESDC official marks

      Some official marks for which ESDC is responsible include the acronyms "CPP" (Canada Pension Plan) and "OAS" (Old Age Security), and their French equivalents. ESDC also has various official marks, both visual and text, for "Service Canada."

  • 2. What protections does an official mark grant? What are its limits?

    Once CIPO advertises an official mark, others are forbidden from starting to use that particular mark, or anything similar to it. Some important limits are as follows.

    Retroactive limits: Official marks provide future-oriented protection. They do not protect ESDC from trademark owners (e.g. businesses) whose similar trademarks may predate your mark’s advertisement.

    International limits: Because official marks exist only in Canadian law, should an unauthorized entity use an official mark outside Canada ESDC would have to find other options to enforce ESDC’s rights.

    General limits: The rights granted by an official mark are not absolute. In other words, a third party may sometimes use an official mark without ESDC’s consent. For example:

    • Rights under the Canadian Charter of Rights and Freedoms would supersede official mark rights;
    • under the Trademarks Act, more than one public authority may use the same official mark (most likely to occur for marks made up of ordinary words or short acronyms); and,
    • court decisions set out other legal principles, rules and parameters.
    • A. How do I determine if my ESDC program, service or activity ("Program") could make good use of an official mark?

      Intellectual property (IP) rights are important when you create and brand a Program. They also help protect Program integrity. However, an official mark is not the only IP protection available to ESDC.

      IPCOE advises Programs to create a new official mark only for enduring and prominent programs or services with a significant and sensitive external reputation to protect. Even in such cases, an official mark may not be the best option. If ESDC choses to adopt an official mark, it should be advertised (by CIPO) as soon as possible after Program implementation or launch. ESDC must prepare early on.

      Ask yourself this question: Would a third party (think of any business, whether valid or ill intentioned) want to associate itself publicly with the Program? Would they want to pretend to actually be the Program, or pretend to be authorized by the Program? Would they be able to profit or otherwise gain from such activities? If the answer is "yes," consider contacting IPCOE to discuss the intellectual property protections available to your Program.

  • 3. Who may create a new mark? How do they request its creation?

    There are at least two aspects to the process of creating a new official mark.

    One aspect is deciding on and designing the actual mark! This could be a visual logo or a creative, novel Program name. In general, Programs must work with groups such as the Public Affairs and Stakeholder Relations Branch (PASRB), IPCOE and Legal Services. If you intend to request a visual mark, the parties must also consider the Federal Identity Program and the possible need for Treasury Board approval.

    The second aspect of creating a new official mark is as follows, under the next heading.

    • A. Who, on behalf of ESDC, may ask CIPO to advertise a new official mark?

      As per ESDC’s IP Management Policy, Directors General (DGs) level and above may ask the IPCOE to have the Canadian Intellectual Property Office (CIPO) advertise a new official mark. To start the process, contact the IPCOE.

      During this process, DGs must consult IPCOE, Legal Services and PASRB. Legal Services and IPCOE will work with the client to prepare the note to CIPO. ESDC must send the final signed note to CIPO.

  • 4. What costs are involved in advertising an official mark?

    Costs of creating a new official mark could include:

    • the fee charged by the Canadian Intellectual Property Office (estimate $500);
    • the services of a graphic designer (optional, PASRB can advise);
    • the services of a trademark agent (a best practice), at approximately $1,000, to determine whether the proposed mark is at risk of being confused with an existing trademark; and,
    • indirect cost: Program, IPCOE, Public Affairs and Legal Services time and staff to prepare the request and respond to any questions or challenges from CIPO.

    Other costs may arise depending on the situation. Ensure you involve IPCOE, Public Affairs and Legal Services as early on in the process as possible to identify and mitigate any such costs.

  • 5. How long does an official mark last?

    Unless struck down in any court challenge, official marks are permanent. A program with official marks may need to respond to administrative requests (see below).

    If a third party successfully challenges an official mark, a court may cancel CIPO’s advertisement and declare that the protections previously granted are no longer available to ESDC.

  • 6. Once a program has a mark, what should its staff know and do?

    Programs that manage existing official marks need to plan for the following three items.

    Compliance (monitoring and enforcement): Official marks grant legal rights. Yet, these powers do not work autonomously – ESDC must act to verify third parties’ compliance with ESDC rights and to enforce ESDC’s rights when necessary. A proactive monitoring plan should be part of creating any new official mark. If your program finds unauthorized use of an official mark, contact IPCOE.

    Consent requests: Because official marks grant broad protection, sometimes ESDC receives third party requests for ESDC’s consent to use the official mark for a purpose unrelated to the Program. The typical request comes from a business that wants to register a new trademark. The trademark is in some way similar to an existing ESDC official mark. (Such requests are most common for a basic word or letter mark, like "SV") The program DG, working with IPCOE, must review and respond to these requests promptly, because CIPO enforces strict deadlines in the trademark application process.

    Maintenance: As a best practice, ESDC should maintain its official marks when needed – for example, if the goods or services represented by the mark change significantly. ESDC simply sends a letter to CIPO. This way, CIPO’s database stays accurate and the public has accurate information on ESDC’s marks.

  • 7. If we no longer need an existing official mark, how may we give it up?

    Sometimes, the Program may no longer need an official mark. For instance, the mark may be outdated, or ESDC may agree to have another federal department be responsible for it.

    The responsible DG must notify the IPCOE. IPCOE will consult with the DG or their representative, and with Public Affairs and Legal Services, to determine the best approach.

    Reminder: Contact the IPCOE to discuss any real case involving an official mark.