A note on Canadian Trademark law as it applies to the U of Guelph “OpenED” mark

Clint Lalonde has been investigating a strange state of affairs in which it appears the University of Guelph has been restricting the use of the word “OpenED” via a trademark. Brian Lamb has been amplifying this.

Here’s the Canadian IP office page for the OpenED mark (#0922139), which cites the University of Guelph as the applicant.

You’ll see the mark has been advertised, but not registered. In Canadian IP law, the advertisement stage is a chance for “opposition” to be expressed. This is normally a period measured in months, unless an opposition has been registered. In this case the advertisement happened in December 2013.

An institutional legal team could probably order further details on the case.

In the relevant issue of the Trademark Journal (where the mark has to be advertised), the following text appears under “OpenED”:

“The Registrar hereby gives public notice under subparagraph 9(1)(n)(ii) of the Trade-marks Act, of the adoption and use by University of Guelph of the badge, crest, emblem or mark shown above.”

Subparagraph 9(1)(n)(ii) of the Act reads:

“No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for […] any badge, crest, emblem or mark […] of any university […] in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use”

So what we are really dealing with here is not a trademark but a public notice of the adoption and use of the “OpenED” mark – such that no business can register it as a trademark. Or in Canadian IP legal jargon, a “prohibited mark”.

Here’s a useful article on Prohibited Marks in Canadian IP law, and here is another.

A prohibited mark exists indefinitely and restricts the use of a mark without the permission of a public body in this case (Guelph). The only redress would generally be a judicial review, which is expensive and tricky.

For me, judicial comments around Kirkbi AG v Ritvik Holdings Inc would appear to apply in this case (though the case refers to trademarks rather than prohibited marks):

“the [Trademarks] Act clearly recognizes that it does not protect the utilitarian features of a distinguishing guise. In this manner, it acknowledges the existence and relevance of a doctrine of long standing in the law of trade-marks. This doctrine recognizes that trade-marks law is not intended to prevent the competitive use of utilitarian features of products, but that it fulfils a source-distinguishing function. This doctrine of functionality goes to the essence of what is a trade-mark.”

As in the cited case (the “Lego” case) it would appear that “OpenED” is a common contraction of “open education” which (as with the design of the studs on lego bricks) is be a utilitarian feature of a product, allowing for interoperability, rather than a source-distinguishing function. Nothing in the “OpenED” prohibited mark refers to a distinct and source-specific feature of open education materials from Guelph.

I’m not yet sure how one could contest a prohibited mark other than via a judicial review, but I’ve contacted the Canadian IP office to find out. One means may be to apply for a trademark that infringes the prohibited mark and let the review process sort it out – and if awarded the mark immediately publish an undertaking not to use it to restrict the actions of others.