Section 9 Marks

In this blog’s introductory post I mentioned that although you can’t restrict a search of CIPO’s online trademark database to retrieve only certain types of Section 9 marks, you can do exactly that if you're working with CIPO’s trademark XML data.

As of the date of this post, Section 9(1) of the Trademarks Act contains 21 sub-sections setting out different types of so-called prohibited marks.  You’ll find examples of all 21 types on the Canadian trademarks register, right?  Wrong!  For example, sub-section 9(1)(f) prohibits adoption of the expression “Red Cross”, but you won’t find “Red Cross” per se if you search CIPO’s online trademark database (you will find a few marks incorporating the expression “Red Cross” in combination with other text &/or design matter).

You will only find on the Canadian trademarks register examples of those types of prohibited marks in respect of which “...the Registrar has...given public notice...” as stipulated in certain sub-sections of Section 9(1).  Looking through Section 9(1), we find that stipulation in the following sub-sections:

9(1)(e)	the arms, crest or flag adopted and used at any time by Canada or by any province or municipal corporation in Canada
9(1)(i)	any territorial or civic flag or any national, territorial or civic arms, crest or emblem, of a country of the Union, if the flag, arms, crest or emblem is on a list communicated under article 6ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article
9(1)(i.1)	any official sign or hallmark indicating control or warranty adopted by a country of the Union, if the sign or hallmark is on a list communicated under article 6ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article
9(1)(i.3)	any armorial bearing, flag or other emblem, or the name or any abbreviation of the name, of an international intergovernmental organization, if the armorial bearing, flag, emblem, name or abbreviation is on a list communicated under article 6ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article
9(1)(n)(i)	any badge, crest, emblem or mark…adopted or used by any of Her Majesty’s Forces as defined in the National Defence Act,
9(1)(n)(ii)	any badge, crest, emblem or mark…of any university
9(1)(n)(iii)	any badge, crest, emblem or mark… adopted and used by any public authority, in Canada as an official mark for goods or services
9(1)(n.1)	any armorial bearings granted, recorded or approved for use by a recipient pursuant to the prerogative powers of Her Majesty as exercised by the Governor General in respect of the granting of armorial bearings

If you search through CIPO's XML trademark data (as of 15-Feb-2021) you will find 30,907 Section 9 marks (of which 2,501 are inactive, i.e. abandoned, refused, withdrawn, etc.) as follows:

Section 9 Citation	Description	# Marks
9(1)(e)	Canadian Government Flags - federal, provincial, municipal	483
9(1)(i)	Foreign Government Flags and Symbols and 6ter applications	1,212
9(1)(i.1)	6ter - Official Sign or Hallmark	791
9(1)(i.2)	6ter - National Flag of a Country of the Union	2
9(1)(i.3)	6ter - Armorial Bearing/Emblem or Abbreviation of Name	2,155
9(1)(n)(i)	Her Majesty's Forces	531
9(1)(n)(ii)	Universities	3,469
9(1)(n)(iii)	Public Authorities in Canada for specific goods and services	22,218
9(1)(n.1)	Armorial Emblems	46
		30,907

Wait a minute—why do we see subsection 9(1)(i.2) in the second table, but not in the first table above?  There is no “...the Registrar has...given public notice...” stipulation in subsection 9(1)(i.2), which in its entirety reads:

9 (1) No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for…(i.2) any national flag of a country of the Union;

Nevertheless, CIPO has seen fit to include in its trademark XML data (and on the Canadian trademark register) two prohibited marks which have apparently been recorded pursuant to subsection 9(1)(i.2) rather than pursuant to subsection 9(1)(i).

It takes some effort to locate those two marks via the public search interface of CIPO's online trademark database, but I can easily locate them in my database.  They are application nos. 970406-00 and 972567-00; which respectively pertain to the national flags of South Korea and Mozambique.

Click to enlarge the images at right, which have been cropped from CIPO’s online database records for the prohibited marks which are the subject of application nos. 970406-00 and 972567-00.

Notice the Category “Prohibited Mark; Flag” and Section 9 information “Paragraph 9(1)(i.2)” details and recall that you cannot restrict a search of CIPO’s online trademark database via such details.

Here are the XML elements corresponding to those details, as they appear in CIPO’s .xml file for application no. 972567-00 (click to enlarge the image).  Notice the information encapsulated by the catmk:Section9Description element, namely “Paragraph 9(1)(i.2)”; and that encapsulated by the

catmk:TrademarkClassDescription element, namely “Prohibited Mark; Flag”.  These are identical to the details presented via CIPO’s online database.

Every one of the 30,907 Section marks recorded in CIPO’s online trademark database (as of 15-Feb-2021) carries similar details pertaining to one of the nine sub-sections tabulated above.  Here are some examples for each of those nine types (click to enlarge any of the images in the Details column; click the hyperlinks in the Link column to open CIPO’s online database to the web page for that mark):

Citation	Description	Link	Details
9(1)(e)	Canadian Government Flags - federal, provincial, municipal	921561
9(1)(i)	Foreign Government Flags and Symbols and 6ter applications	973545
9(1)(i.1)	6ter - Official Sign or Hallmark	973613
9(1)(i.2)	6ter - National Flag of a Country of the Union	972567
9(1)(i.3)	6ter - Armorial Bearing/Emblem or Abbreviation of Name	974146
9(1)(n)(i)	Her Majesty's Forces	923955
9(1)(n)(ii)	Universities	926322
9(1)(n)(iii)	Public Authorities in Canada for specific goods and services	926727
9(1)(n.1)	Armorial Emblems	922917

Finally, notice that the application numbers CIPO assigns to the nine sub-sections tabulated above have the form 092nnnn or 097nnnn.  These are assigned by CIPO in accordance with WIPO’s ST.13 Standard “Recommendation For The Numbering Of Applications For Industrial Property Rights (IPRS)”.  In its Trademarks Data Dictionary, CIPO explains that it has assigned “certain special application number ranges” such as 09nnnnn for “Section 9(1)(e) and (n) applications”; and 097nnnn for “Section 9(1)(i)” applications.  Some clarification is apparently warranted in relation to the 09nnnnn range.