Canada Post Corp. v. United States Postal Service, (2007) 358 N.R. 154 (FCA)

• Judge: Nadon, Sexton and Sharlow, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: January 09, 2007
• Jurisdiction: Canada (Federal)
• Citations: (2007), 358 N.R. 154 (FCA);2007 FCA 10

Can. Post v. US Post (2007), 358 N.R. 154 (FCA)

MLB headnote and full text

Temp. Cite: [2007] N.R. TBEd. JA.028

United States Postal Service (appellant) v. Canada Post Corporation (respondent)

(A-633-05; 2007 FCA 10)

Indexed As: Canada Post Corp. v. United States Postal Service

Federal Court of Appeal

Nadon, Sexton and Sharlow, JJ.A.

January 9, 2007.

Summary:

Canada Post Corp. (CPC) applied for judicial review of 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 (USPS) pursuant to s. 9(1)(n)(iii) of the Trade-marks Act.

The Federal Court, in a decision reported at 284 F.T.R. 221, allowed the application and quashed the Registrar's decisions. USPS appealed.

The Federal Court of Appeal dismissed the appeal.

Trademarks, Names and Designs - Topic 4002

Trademarks - Prohibited marks - Marks adopted or used by public authority (official marks) - Canada Post Corp. (CPC) applied for judicial review of 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 (USPS) pursuant to s. 9(1)(n)(iii) of the Trade-marks Act - CPC asserted that the USPS was not entitled to official marks as it was not a public authority in Canada - At issue was whether the "public authority" in s. 9(1)(n)(iii) had to be a public authority "in Canada" - USPS argued that any ambiguity in the Act had to be resolved in favour of an interpretation that would honour Canada's international obligations under the Paris Convention for the Protection of Industrial Property - The applications judge rejected the argument - While the term "official mark" was commonly used in a generic sense to refer to the class of marks covered by s. 9, the only place that the term "official mark" actually appeared was in s. 9(1)(n)(iii) - The protections available to public authorities by virtue of s. 9(1)(n)(iii) were a Canadian creation - The Paris Convention did not address true s. 9(1)(n)(iii)-type "official marks", restricting its reach to "trademarks, service marks, trade names, indications of source or appellations of origin..." -  Accordingly, the Paris Convention did not extend to cover official marks of the type in issue in this case - The Federal Court of Appeal affirmed the decision.

Trademarks, Names and Designs - Topic 4002

Trademarks - Prohibited marks - Marks adopted or used by public authority (official marks) - Canada Post Corp. (CPC) applied for judicial review of 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 (USPS) pursuant to s. 9(1)(n)(iii) of the Trade-marks Act - CPC asserted that the USPS was not entitled to official marks as it was not a public authority in Canada - The applications judge allowed the application and quashed the Registrar's decisions - The "public authority" in s. 9(1)(n)(iii) had to be a public authority in Canada - Given that there was no evidence that any level of government in Canada exercised any measure of power or control over any aspect of the USPS's operations, USPS was not a public authority for the purposes of s. 9(1)(n)(iii) - As a result, it was not entitled to claim the benefit of s. 9(1)(n)(iii) - The Federal Court of Appeal affirmed the decision.

Cases Noticed:

Ontario Association of Architects v. Association of Architectural Technologists of Ontario, [2003] 1 F.C. 331; 291 N.R. 61 (F.C.A.), refd to. [para. 1].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 9(1)(n)(iii) [para. 1].

Counsel:

Anthony Prenol and Antonio Turco, for the appellant;

John Laskin, for the respondent.

Solicitors of Record:

Blake, Cassels, Graydon LLP, Toronto, Ontario, for the appellant;

Torys LLP, Toronto, Ontario, for the respondent.

This appeal was heard on January 9, 2007, by Nadon, Sexton and Sharlow, JJ.A., of the Federal Court of Appeal. The following judgment of the Court of Appeal was delivered from the bench by Sharlow, J.A., on January 9, 2007.