Use of Trademark PATH

 The Strategic Policies and Priorities Committee recommends the adoption of the report (May 13, 1998) from the Commissioner of Economic Development, Culture and Tourism.

 The Strategic Policies and Priorities Committee advises that it has requested the Commissioner of Economic Development, Culture and Tourism to investigate opportunities to involve the private sector and benefitting businesses in assuming the costs of the City of Toronto=s underground walkway system currently being borne by the municipality.

 The Strategic Policies and Priorities Committee submits the following report (May 13, 1998) from the Commissioner of Economic Development, Culture and Tourism:

 Purpose:

 This report recommends that the City of Toronto consent to the adoption, use and registration of the trademark PATH by The Young Consulting Group Inc. a Vancouver based management consulting firm. Council approval is required since the City is the owner of the official mark PATH which identifies the downtown underground walkway system.

 Source of Funds, Financial Implications and Impact:

 No funding is required and there are no financial implications for the City of Toronto.

Recommendations:

 That the City of Toronto consent to the registration of PATH as a trademark by The Young Consulting Group Inc. subject to the applicant=s agreeing that the trade mark for which consent has been sought will not be used in any design form which is confusingly similar to the design forms used by the City of Toronto, including any similar typeface.

 Council Reference/Background/History:

 The former Corporation of the City of Toronto was the owner of the following official marks pursuant to section 9 of the Trade Marks Act which identify the underground walkway system in downtown Toronto: PATH, P.A.T.H. & Design, PATH & Design, INSIDE PATHWAYS, INSIDE PASSAGE, THE PATHWAY, PATH DOWNTOWN WALKWAY and Design, DOWNTOWN WALKWAY and PATHWAY SYSTEM.

 Subsection 9(1) of the Trade Marks Act provides that 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 any badge, crest, emblem or mark adopted and used by any public authority in Canada as an official mark for wares or services. Subsection 9(2) of that Act provides that nothing in the section prevents the adoption, use or registration of a trade-mark or otherwise, in connection with a business, of any mark described in subsection 9(1) with the consent of the public authority which was intended to be protected by the section. It is this requirement for consent that has generated the following request.

 The City has received a request from The Young Consulting Group Inc., a British Columbia management consulting firm specializing in the health care and non-profit sectors to provide its consent to that company=s adoption and use of the trademark PATH in association with a Performance Assessment Tool for Healthcare. Performance Assessment Tool for Healthcare assists decision making bodies who must have accurate information upon which to make their decisions and to involve and investigate multiple-site, multiple-service situations where clarity of the facts and perceptions can lead to evidence-based decisions.

 The City=s consent has been requested to enable The Young Consulting Group Inc. to use and register the trademark PATH. Since it is unlikely that anyone would associate a Performance Assessment Tool for Healthcare with the City=s official mark PATH, it is our view that the City could reasonably give its consent. Under the circumstances and in view of the proposed use of the trademark we do not recommend that a fee be charged for the use of the mark, nor do we recommend any limitations on it=s use. We do, however, recommend that as a condition of the consent being given that the applicant be required to agree that the trademark will not be used in any design form which is confusingly similar to the design forms used by the City of Toronto, including any similar typeface.

 We have consulted with the City Solicitor in the preparation of this report.

 Contact Name:

 George Spezza: phone: 392-6904, fax: 392-0675, E-mail: gspezza@city.toronto.on.ca.