Charity not a “public authority” for purposes of official marks

On July 11, 2016 Justice Russell granted Starbucks (HK) Limited’s (not the coffee maker) application to review and set aside the Registrar’s decision to give public notice of the adoption and use of NOWTV as an official mark of Trinity Television Inc. Section 9(1)(n)(iii) of the Trade-marks Act provides that a “public authority” may request that the Registrar give public notice of the adoption and use of any badge, crest, emblem or mark as an official mark.

Trinity appears to have been a registered charity that produced and distributed television programs conveying Christian teachings and became the holder of the official mark NOWTV on June 20, 2001. On October 24, 2013 Starbucks filed an application to register NOW TV & Design as a trademark. Starbuck’s application was prohibited in light of Trinity’s official NOWTV mark.

After finding that an extension of time for Starbucks to bring the application was warranted Justice Russell, following the Court of Appeal’s decision in Canadian Jewish Congress, held that the Registrar’s finding that Trinity is a “public authority” was unreasonable because status as a charity is insufficient to establish an entity as a “public authority” under section 9(1)(n)(iii) of the Trade-marks Act:

[22] Apart from the issue of costs, I am satisfied that the Applicant has established its case for the relief sought in that:

…

(2) The Decision is unreasonable because the law is clear that status as a charity is insufficient to constitute an entity as a “public authority”

In setting aside the Registrar’s decision to grant NOWTV as an official mark Justice Russell declined to award costs against Trinity as the business was apparently sold to Rogers in 2005 and Trinity, which did not participate in the judicial review, did not oppose Starbucks’ application.

A copy of Justice Russell’s Judgment and Reasons can be found here.