An official mark is a form of intellectual property unique to Canada. Pursuant to section 9(1)(n)(iii) of the Trademarks Act, a “public authority” can request that the Registrar of Trademarks give public notice of any badge, crest, emblem or mark adopted and used by the public authority in Canada as an official mark for wares or services. Once public notice is given, no other person may adopt (in connection with a business, as a trademark or otherwise) any mark consisting of the official mark, or so nearly resembling the official mark as to likely be mistaken for it.
Until recently, the question remained open as to whether a public authority located outside Canada could obtain official mark protection within Canada. The Federal Court of Canada has now confirmed that in order to obtain official mark protection, the public authority must be “a public authority in Canada” that is subject to governmental control within this country.
In Canada Post Corporation v. United States Postal Service (2005 FC 1630), Canada Post Corporation (“Canada Post”) brought an application for judicial review of the decisions of the Registrar of Trademarks to give public notice of the adoption and use of 13 official marks by the United States Postal Service (“U.S.P.S.”). As a preliminary issue, Canada Post argued that the Registrar erred in finding that the U.S.P.S. is a “public authority” for the purposes of section 9(1)(n)(iii).
In considering this issue, the Court took note that the English and French versions of section 9(1)(n)(iii) are not identical, as the English version contains a comma which is not present in the French version. The English version states that in order for a mark to be a proper official mark, it must have been “adopted and used by any public authority, in Canada”, while the French version provides that the mark must have been “adopté et employé par une autorité publique au Canada”.
The issue before the Court was whether the words "in Canada" modified the phrase "public authority". After reviewing the jurisprudence and the legislative history, the Court held that this was the case.
To determine whether the U.S.P.S. was a public authority in Canada, the Court considered the test for a “public authority” established in previous jurisprudence, which entailed an inquiry into whether the entity in question is subject to governmental control, and the extent to which its activities benefit the Canadian public. Ultimately, the Court held that in order to satisfy the test, the public authority must be subject to governmental control within Canada. The Court was influenced by the fact that the benefits accorded to the holders of official marks exist only within the geographic confines of Canada, and any resulting injury would be suffered by Canadian trademark owners or the Canadian public. There was no evidence before the Court that any level of government in Canada exercised any measure of power or control over the U.S.P.S. As such, the U.S.P.S. was held not to be a public authority in Canada for the purposes of section 9(1)(n)(iii) of the Trademarks Act.
In the result, the Court allowed Canada Post’s application and set aside the decisions of the Registrar in respect of each of the official marks of the U.S.P.S. in issue. In view of this decision, the Canadian Trademarks Office is currently circulating a draft Practice Notice which takes into account the decision of the Court. The decision has been appealed by the U.S.P.S.
Canada Post Corporation was represented by David Morrow and Jeremy Want of our Ottawa office.