Trade mark registration and copyright can be effective measures for protecting many Indigenous words, designs and images which have special political or cultural significance, but the most powerful legal weapon in the intellectual property arsenal for First Nations peoples is an “official mark”.
An official mark is a special type of mark under section 9 of the Canadian Trade-marks Act which prohibits the adoption, in connection with a business, of any “badge, crest, emblem or mark” which has been adopted and used by any “public authority”. The purpose of this section was to remove certain marks from the field of trade and business and to prevent people from using respected public symbols for personal gain.
A “public authority” is any entity which operates under a significant degree of government control and whose activities benefit the public as opposed to profiting private interests. Indigenous bands and native organizations which meet these qualifications are eligible public authorities. For example, the Skatin Nations, the Kaska Tribal Council, the Council of the Comox Band of Indians, the Osoyoos Indian Band and the First Nations Summit have protected the respective names SKATIN, KASKA, QUENEESH, NK’MIP and FIRST NATIONS SUMMIT as official marks.
Official marks have many advantages over regular trade marks. They are generally less expensive and faster to obtain. There is no examination, just an assessment as to whether the applicant meets the criteria for public authority status, and no opposition process.
Once public notice is given, the owner is entitled to exclusive rights for all goods and services, not just for those which have been used with the mark. The term for protection is unlimited and no renewal or maintenance fees are required. There are no provisions for cancellation or revocation.
Official mark status is also available for heralds, flags, armorial bearings and designs. The Cree Nation of Chisasibi has, for example, protected its herald as an official mark, the Nisga’a Nation its flag, the Huron Wendat Nation its armorial bearings and the Peigan Band its hide design.
Section 9 has also been used to protect petroglyphs from commercial exploitation. The Snuneymuxw First Nation has official marks for about ten such petroglyph designs, so images which have cultural or traditional import but are not covered under copyright law may also be protectable as official marks.
The official mark GENUINE COWICHAN, which has been adopted by the Cowichan Band Council, also does double duty as a kind of certification mark – certifying compliance with defined standards – and as a geographical indication of origin.
Public notice of an official mark gives its First Nations owner an enforceable right to stop any use contrary to the prohibition without its express authorization or consent. More importantly, it enables the owner to effectively control how that mark is used. This is the best available legal option for removing important Indigenous words, designs and images from becoming “pawns of trade or proprietorship”.
Official marks have some extraordinary advantages over regular trade marks or certification marks and also offer protection for traditional art and designs which may not be covered by copyright. Under our present legislation, there is no better way to protect and control the use of a “badge, crest, emblem or mark” which may have special significance to Indigenous peoples.