Move to 'emPOWER' Ontario energy consumers ends in $10K trademark confusion

Ontario launched its emPOWERme website in 2013 as an original way to educate taxpayers about the value of energy conservation.

Only problem is — the program's signature slogan turned out to belong to someone else.

Now, five years later, the website has vanished and a federal court judge has ordered the province to pay $10,000 to the B.C. firm that first coined the phrase 'Empower Me' in relation to energy advocacy.

In a decision released earlier this month, Justice Richard Southcott found that Ontario's Ministry of Energy had used the term in a way that could be easily confused with a trademark registered by Vancouver's Quality Program Services Inc (QPS).

And in a legal twist, the decision is believed to be the first time anyone has successfully made such a claim in relation to a controversial type of "super trademark" available to public agencies.

"We see this as a very important decision, given the passion and entrepreneurship that it takes for a business to build a successful brand," Yasmin Abraham, director of QPS's Empower Me program, said in a statement.

"The Federal Court has made a strong statement regarding the legal rights and obligations associated with the government's official marks, and private businesses' registered trademarks."

Empower Me versus emPOWERme

QPS has been running its Empower Me program in B.C. since April 2012.

According to the decision, the program promotes energy conservation among new Canadians by hiring "Energy Mentors" to spread the word about energy efficiency.

The company filed a trade-mark application in April 2013 for use of the mark "EMPOWER ME". The registration was granted in 2014 and is part of QPS's website, social media and promotional material.

The government of Ontario announced the launch of its "emPOWERme" website in November 2013.

According to a news release issued at the time, the "new, interactive website" was supposed to "help energy consumers take charge of the power they use by better understanding the province's electricity system."

QPS became aware of the Ontario program in November 2015 and wrote the next month to request that the province cease and desist from using the term "Empower Me."

Ontario responded —in part — by seeking "official mark" status for "emPOWERme" in December 2016.

And that's when the little case began to take on bigger implications.

The 'official mark' controversy

An official mark allows public agencies like ministries, lottery companies or universities to register trademarks without any of the scrutiny usually required to register a phrase, symbol or other kind of mark.

That means a government can claim ownership to a trademark without any consideration of the fact it might already belong to someone else. The original owner may still be allowed to use it — but they can't expand the use of the trademark in any fashion.

University of Ottawa law professor Teresa Scassa says the system is uniquely Canadian. It has caused much consternation in trademark circles.

"The protection given to official marks in Canada is quite astonishing," says Scassa.

"It turns them into super trademarks that are available without any formalities for any government entity. So decisions that place any boundaries or limits on the scope or power of official marks are quite important."

Previous official mark controversies have involved the threat of lawsuits from the Canadian Mint over the use of the penny on the cover of a musician's album, and attempts to limit use of images associated with the iconic Bluenose.

The terms "Happy Holidays" and "Season's Greetings" are both official marks belonging to the Western Canada Lottery Corporation. But there's no indication they want to stop anyone else from using them. Yet.

No trump card

The government of Ontario argued that even though QPS may have been using the slogan first, adopting "emPOWERme" as an official mark meant the province couldn't be held liable for trademark infringement.

QPS lawyer Jonathan Woolley says the case is believed to be the first time a court has ever decided on the issue.

"It doesn't in fact create this trump card in the form of an official mark. It doesn't provide immunity to a public authority who owns an official mark," says Woolley.

"Really, what the court is saying is that public authorities are subject to the same liabilities as anyone else — individuals or private corporations for trademark infringement."

A click on the link provided by Ontario's Ministry of Energy back in 2013 now leads to a generic government website with the message "Sorry, we can't find the page you are looking for."

In an email, a spokesperson for the department noted that the emPOWERme website was last updated under the former Liberal government in 2016. It was decommissioned as part of "scheduled government web transition" this year.

But "emPOWERme" still remains an official mark of the Government of Ontario. And no matter who is in power, the rights attached to official marks are still of consequence.

The government says it is still reviewing the decision and wouldn't comment while the period for appeal is still open.