Supreme Court confirms official marks ruling

By refusing to hear the US Postal Service's (USPS) application for leave to appeal a Federal Court of Appeal decision, the Supreme Court of Canada has effectively denied the USPS official mark protection in Canada and has affirmed that only Canadian entities can afford themselves of official mark protection in Canada.

The complainant in the case, Canada Post Corporation, challenged the USPS's entitlement to a range of official marks including EXPRESS MAIL, FIRST-CLASS MAIL, STANDARD A MAIL, SIGNATURE CONFIRMATION and nine others.

In a ruling last year, the trial judge set aside the Trademark Office's decision to grant these marks to the USPS. Earlier this year, the Federal Court of Appeal affirmed Canada Post's victory and issued detailed reasons (see Official marks open only to Canadian entities). The Supreme Court of Canada has now dismissed USPS's application for leave to appeal.

The case turned on the interpretation of the phrase 'public authority in Canada' in the legislation, which the appeal court said must be a public authority subject to control by a government in Canada. Previous case law had held that this was not strictly required.

The ruling is a blow to foreign entities, such as the USPS, wishing to obtain official mark protection in Canada. After the decision, foreign public authorities, (ie, public authorities not subject to Canadian governmental control), can apply only for regular trademarks in Canada.

For new requests for the giving of public notice of the adoption of an official mark, the Trademark Office's 2006 practice note requires evidence of public authority status. For existing marks, the office is unlikely to review their compliance with the USPS Case. Official mark holders should, however, exercise caution: with refusal to hear an appeal, the Supreme Court has made it clear that official marks in the hands of foreign entities are vulnerable if challenged.

Yuri Chumak and R Scott MacKendrick, Cameron MacKendrick LLP, Toronto