Prohibited Marks and Universities: Are You Taking Full Advantage of Your Rights under the Trademarks Act?


Universities, like any modern organization, use their trademarks to express their distinct identity, market themselves, and generate revenue from branded goods and services. Universities, of course, are a special sort of endeavor and in recognition of this special status, Parliament has enabled universities to take advantage of a uniquely Canadian category of trademarks called “Prohibited Marks”. In this article, we’ll explain how they’re easier to obtain, easier to enforce and easier to maintain than regular trademarks, and should therefore form part of every educational institution’s trademark portfolio.

Section 9 of the Canadian Trademarks Act prohibits people from adopting a mark which is likely to be mistaken for any badge, crest, emblem or mark of any university, Canadian military force, or public authority. Regular marks and Prohibited Marks share the same basic function – they prevent others from associating their goods and/or services with that same mark.

Universities are automatically entitled to Prohibited Marks under Canadian law. Other educational institutions, such as colleges and institutes, may be entitled to a very similar sort of mark, called  “Official Marks” if they can show that the government exercises a significant degree of control over their operations.

What qualifies as a “significant degree of control” is a well-litigated point in Canada – stay tuned for another article exploring this point. Suffice it to say, it’s more likely than you may think.

Prohibited Marks enjoy special advantages over regular trademarks.

First, they’re easier to obtain. Some of the normal restrictions on trademark registrations do not apply to Prohibited Marks. For instance, a Prohibited Mark can: clearly describe the university’s goods or services, consist of a name or surname, or identify the geographical location of the university (the Trademark Office would likely refuse a regular trademark that had these features). Also, the process of objecting to a new Prohibited Mark is more onerous than objecting to a regular trademark, which decreases the likelihood that a new Prohibited Mark will actually be challenged, except upon truly substantive grounds.

Second, they’re easier to enforce. Once a Prohibited Mark is effective, no one may register a new trademark if that new trademark resembles the Prohibited Mark. If a university has a regular trademark and a new, competing trademark is applied for, the university must prove that a consumer would be confused about the source of goods or services associated with the new trademark, which can be more difficult than proving mere resemblance. Also, Prohibited Marks prevent other people from beginning use of a similar mark with any goods or services (generally, regular trademarks block only goods and services that the owner provides).

Third, they’re easier to maintain. Prohibited Marks are not “registered”, and therefore do not need to be renewed and are not subject to cancellation for non-use.

These distinct advantages afforded by Prohibited Marks are such that, in commercial terms, obtaining and maintaining these marks is more cost-effective and certain than registering regular trademarks, with greater enforceability rights. Prohibited Marks can also be easier to license than regular trademarks: often you don’t need to provide for the same level of control over licensees (more on this topic later, in our upcoming article on licensing Prohibited and Official Marks).

All in all, every university should ensure that their brand protection strategy includes protection under section 9.

This article is the first in a series about trademarks focused on the Canadian post-secondary sector.