Supreme Court declines to weigh in on HALLOUMI

Canada

Canadian cheese producers have prevailed in the long-running battle over HALLOUMI, defeating an application by the Ministry of Commerce, Industry and Tourism of the Republic of Cyprus (MCIT) to register HALLOUMI as a certification mark for cheese based on use in Canada since October 19 1995. The standards associated with the certification mark were expressed as follows:

" the defined standard prescribes that the cheese is produced only in Cyprus using the historic method unique to that country, namely: traditionally, it has been produced from sheep's and/or goat's milk. In case of mixtures, cow's milk is also allowed. Raw materials which are used for its production include rennin, mint leaves and salt. See file for information about quality characteristics, chemical characteristics and maturation."

When the application was finally advertised, it was opposed by a number of entities representing Canadian milk and cheese producers. Ultimately, the application was refused by the Opposition Board and the refusal was upheld by the Federal Court and subsequently by the Federal Court of Appeal. An application for leave to appeal to the Supreme Court of Canada was turned down on April 12 2012.

The primary issue considered by the Federal Court of Appeal was whether HALLOUMI had “by ordinary and bona fide commercial usage” become recognised in Canada as designating a kind or quality of cheese as of the date of the Opposition Board decision in 2008. MCIT argued that the phrase required extensive commercial usage of a mark and wide recognition of that mark as designating a kind of product, and used the word 'cheddar' as an example of something that could not be protected as a certification mark. The court stopped short of the interpretation put forward by MCIT, but did appear to acknowledge that the use required must be extensive when it upheld the following remarks of the trial judge:

"I am also of the view that the facts before him supported his finding that, at the date he issued his decision, the mark had become recognised in Canada as designating a type of cheese. In his reasons, he pointed out that, in order to satisfy its burden of proof, the respondent had to adduce 'sufficient evidence' to demonstrate that the mark had become recognised in Canada, and also noted that 'one would not be able to obtain the monopoly over a term or word under pretext that it is a certification mark if such mark has been used extensively in Canada' by others prior to the relevant date. In my view, this method of dealing with the evidence complies in all aspects with the state of the law on this subject." [emphasis added]

The court went on to note that there was evidence showing that “similar marks had been used by many Canadian cheese manufactures and retailers for many years, such that these marks had become recognised in Canada as designating a type of cheese”. As a result, the court dismissed the appeal.

The court also declined to consider an argument raised by MCIT that the relevant date for consideration of the issue was the date of the adoption of the certification mark as opposed to the date of the Opposition Board decision.

The Supreme Court of Canada was asked to grant leave to appeal with respect to the evidence that is sufficient to establish that a mark is prohibited and also the material date for the assessment of such evidence. As is usual in such cases, the Supreme Court of Canada gave no reasons to explain its decision to refuse leave.

As an aside, it is interesting to note that, in 1997, MCIT also sought and obtained protection for HALLOUMI as an official mark under Section 9(1)(n)(iii) of the Trademarks Act, which provides as follows:

"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, in respect of which the registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use."

At the time, Section 9(1)(n)(iii) was interpreted to include foreign public authorities, but a recent decision of the Federal Court of Appeal (United States Postal Service v Canada Post Corporation) held that, in order for a public authority to qualify for official mark protection in Canada, the public authority must be Canadian. 

Robert A MacDonald, Gowling Lafleur Henderson LLP, Ottawa

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