Official mark declared void as holder is not 'public authority'

Canada

In Maple Leaf Foods Inc v Consorzio Del Prosciutto Di Parma (2012 FC 416, April 12 2012), the Federal Court has held the Consorzio Del Prosciutto Di Parma’s official mark PARMA (and design) (Application 908,349) to be ineffective to give rise to any rights or prohibitions under the Canadian Trademarks Act, invalid and void ab initio. The decision was made in the context of an appeal from the registrar of trademarks’ decision refusing Maple Leaf Foods Inc’s application for the trademark PARMA (and design) citing the Consorzio’s official mark against the application.

Official marks have long been regarded to be, in the words of the Federal Court, virtually unexpungeable. Ordinarily, the validity of an official mark may be challenged only by way of judicial review within 30 days of the publication of adoption and use of the official mark or, possibly, by way of an action. This decision provides that the validity and enforceability of an official mark may also be challenged by way of an appeal of the registrar’s decision, even if well outside of the time period for a judicial review. 

Official marks are a unique feature of Canadian statutory trademark law. As compared to ‘regular’ trademarks, they give to their owners extensive and substantial statutory rights. Upon publication of the adoption and use of an official mark by the registrar, Sections 9 and 11 of the act prohibit any person from adopting or using the official mark or any mark so nearly resembling that mark as to be likely mistaken for the official mark in connection with a business, as a trademark or otherwise. Furthermore, the act provides that a mark whose adoption would be contrary to Section 9 is not registrable as a trademark. 

Although the associated statutory rights are expansive, only entities qualifying as 'public authorities' within the meaning of Section 9 are entitled to hold these rights. Prior to 2007, there was uncertainty as to whether reference to ‘public authority’ included both Canadian and foreign public authorities, or only Canadian public authorities who are subject to control by a Canadian government. The uncertainty was resolved in favour of the later interpretation by the Federal Court of Appeal in Canada Post Corp v United States Postal Services (2007 FCA 10).

However, prior to 2007, certain foreign public authorities had successfully applied for and obtained publication of official marks in Canada. These potentially defective official marks continue to exist and, notwithstanding the clarification provided by Canada Post decision, it has been the registrar’s position that it is required to enforce the statutory rights and prohibitions associated with these official mark, even in the face of evidence that the public authority is not and never has been subject to the control of a Canadian government, and therefore ought never to have been granted an official mark.

Such was the situation in the case at issue. In 2010 the registrar finally refused Maple Leaf’s application for the trademark PARMA in light of the Consorzio’s PARMA official mark. Maple Leaf appealed from the registrar’s decision on the basis that the Consorzio was not a 'public authority' subject to the control of a Canadian government, and was therefore not entitled to hold an official mark, thereby rendering the impugned official mark invalid and ineffective to give rise to any rights or prohibitions, and an improper basis upon which to refuse Maple Leaf’s application.

The court agreed after finding on the evidence that the Consorzio was not subject to control by a Canadian government, declaring the Consorzio to not be a 'public authority' and its official mark “to be ineffective to give rise to any rights or prohibitions under the Trademarks Act and without legal effect”, “invalid and void ab initio”. Further, the court set aside the registrar’s refusal, and directed that Maple Leaf's trademark application be allowed to proceed. 

As a result of this case, a trademark applicant faced with a citation from the registrar based on a potentially invalid official mark may choose to request a final refusal from the registrar in order to appeal from that decision and, in so doing, challenge the validity and enforceability of the official mark blocking its application.  

Laurent Massam, Gowling Lafleur Henderson LLP, Toronto

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