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How the Grinch Stole “Season’s Greetings”

January 6, 2016

By Jonathan Burkinshaw

It is now, it would seem, a violation of Canadian trademark law for businesses to send holiday cards with the message “Season’s Greetings”. The Canadian Trademarks Office today gave notice that “Season’s Greetings” has been adopted and used as an official mark by the Western Canada Lottery Corporation. This means that “Season’s Greetings” is a prohibited mark in Canada, and specifically that, according to Section 9 of the Trade-marks Act, it is prohibited for anyone to “adopt in connection with a business”, whether as a trademark or not, any mark consisting of or likely to be mistaken for the phrase “Season’s Greetings”. In theory, a business distributing holiday cards with this message could run afoul of this prohibition. 

Concerned businesses may be able to take comfort in the fact that the phrase “Happy Holidays” has been protected as an official mark since 2006 and the phrase “Christmas Wishes” has been so protected since 2011 (both also on behalf of Western Canada Lottery Corporation), and, to our knowledge, no one has faced repercussions for using those phrases in connection with their business. The phrase “Holiday Wishes” and that blandest of greetings, “Winter Wishes”, are also official marks of the Corporation. In what might be seen as victory for traditionalists, the phrase “Merry Christmas” has not (yet) been protected as an official mark.

Official marks are an unusual and arcane feature of Canadian trademark law. Created by Section 9(1)(n)(iii) of the Canadian Trade-marks Act, official marks are badges, crests, emblems or marks adopted and used by a Canadian public authority as an official mark for goods or services, and in respect of which the Registrar of trade-marks has given public notice of the adoption and use. The Act does not define who constitutes a “public authority”, although caselaw has held that public authorities must be under a significant degree of Canadian government control. Neither does the Act provide for the examination of official marks for either inherent registrability or confusion with other marks, or create any objection, opposition or non-use cancellation regimes for official marks.

Notably, official mark status can be granted notwithstanding prior rights on the Register and, in this case, the official mark “Season’s Greetings” was granted over a prior registration for the identical mark for chocolate, candy and cookies. While the owner of that registered mark is not prohibited from continued use of its mark with the registered goods, it will not in the future be able to obtain a registration for the same mark for an expanded list of goods without first obtaining consent from the owner of the official mark, and its use of the mark with goods other than the registered goods would, just like holiday cards bearing “Season’s Greetings”, violate Section 9 of the Act. The fact that Western Canada Lottery Corporation uses its Season’s Greetings official mark with “scratch ‘n win” (also an official mark) tickets and that the registered owner’s goods are quite unrelated is not relevant to the legal analysis (although it hopefully is to the practical risk).

Recently, a number of court decisions have limited the rights of official mark owners against others, by finding that the official mark was improperly published since it had not been first “adopted”, or the owner didn’t properly qualify as a public authority.  However, these cases have not resulted in publication of the official mark being formally “withdrawn”.  Amending the official mark provisions are frequently on wish lists of changes to the Trade-marks Act, but despite a major revision to the Act in recent government legislation, the provisions of s. 9 relating to official marks were untouched.

One might be tempted to opine that official marks, with their labyrinthine rules and considerable clout, are “A-MAZE-ING”, but that, too, is an official mark.

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Jonathan Burkinshaw Jonathan Burkinshaw
B.A., M.A., J.D.
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