Official marks open only to Canadian entities

The Federal Court of Appeal of Canada has confirmed that in order for a public authority to qualify for official mark protection in Canada, the public authority must be Canadian. Previously, any public authority, regardless of nationality, was entitled to the benefit of official mark protection.

Official marks receive a breadth of protection that far surpasses the level of protection afforded to ordinary marks. For instance, official marks need not serve to distinguish goods or services, and they may be merely descriptive, or even confusing with the mark of another. Further, once public notice has been given with respect to the adoption and use of an official mark, the mark is virtually unexpungeable.

In the case at hand, Canada Post Corporation (Canada Post) challenged the decision of the registrar of trademarks to give public notice under Section 9(1)(n)(iii) of the Trademarks Act of adoption and use in Canada by the US Postal Service (US Postal) of 13 official marks.

Section 9(1)(n)(iii) 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 mark adopted and used by any public authority, in Canada as an official mark for wares or services, in respect of which the registrar has given public notice of its adoption and use."

The interpretation of this provision has been problematic because of differences in the English and the French texts. In particular, while the English version states that an official mark must have been "adopted and used by any public authority, in Canada", the French version omits the comma, and refers to "a" public authority instead of "any" public authority - "adopté et employé par une autorité publique au Canada".

As a rule, where two versions of bilingual legislation do not say the same thing, the shared meaning, which is typically the narrower meaning, is to be adopted. Accordingly, the Federal Court adopted the narrower French version with the result that not just any public authority qualifies for official mark protection - it has to be a Canadian public authority.

US Postal argued that a narrow interpretation of Section 9(1)(n)(iii) would be a breach of the national treatment provisions of the Paris Convention for the Protection of Industrial Property. The Federal Court held that since official marks are in fact a largely Canadian concept and are not addressed in the Paris Convention, there was no need to extend the protection available to Canadian public authorities to nationals of other member countries.

On a side note, the Federal Court noted that the insertion of the comma into the English version of Section 9(1)(n)(iii) was not a deliberate legislative choice made by Parliament. Rather, the comma was inserted at a later date by the Statute Revision Commission.

On appeal, the Federal Court of Appeal dismissed US Postal's appeal and upheld the Federal Court's decision that in order to obtain official mark protection under Section 9(1)(n)(iii) of the Trademarks Act, the public authority must be a "public authority in Canada" which is subject to governmental control in Canada.

Essentially, the Court of Appeal confirmed the reasoning of the Federal Court that since the extensive benefits afforded to holders of official marks exist solely within Canada, any injury flowing from use of the official marks would be suffered by Canadian trademark owners and the Canadian public. Given this context, the court reasoned that official mark holders should ultimately be accountable to the Canadian electorate via control by a Canadian government.

This decision is consistent with other recent case law in the Federal Court restricting the availability of official mark protection in Canada.

Jennifer Galeano and Robert A McDonald, Gowling Lafleur Henderson LLP, Ottawa