Canada Post Corp. v. United States Postal Service, 2005 FC 1630

• Judge: Mactavish, J.
• Court: Federal Court (Canada)
• Case Date: November 30, 2005
• Jurisdiction: Canada (Federal)
• Citations: 2005 FC 1630;(2005), 284 F.T.R. 221 (FC)

Can. Post v. US Post (2005), 284 F.T.R. 221 (FC)

MLB headnote and full text

Temp. Cite: [2005] F.T.R. TBEd. DE.009

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

(T-64-02; 2005 FC 1630)

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

Federal Court

Mactavish, J.

November 30, 2005.

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 allowed the application and quashed the Registrar's decisions.

Statutes - Topic 1806

Interpretation - Intrinsic aids - Bilingual statutes - Interpretation of one version by reference to the other - [See first and second Trademarks, Names and Designs - Topic 4002 ].

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" - The Federal Court held that given that the English version of the statute was ambiguous, it would turn to the French version, which was clearer - The English version of the legislation was capable of sustaining two different meanings, whereas the French version was only capable of one meaning - Applying the shared or common meaning rule, the court concluded that the words "in Canada"/"au Canada" modified the phrase "by any public authority"/"par une autorité publique" - Consequently, in order to be entitled to an official mark, the public authority in question had to be a public authority in Canada - See paragraphs 39 to 45.

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 the English version of s. 9(1)(n)(iii) referred to "any public authority" and that the provision was not limited to public authorities in Canada - The Federal Court turned to the French version of the provision which referred to "une autorité publique" - In other words, the word "a" was used in the French version of s. 9(1)(n)(iii) to modify "public authority" - Accordingly, by applying the shared or common meaning rule, the narrower French version ought to be adopted, and the provision should be read to limit the availability of official marks to public authorities in Canada - See paragraphs 46 to 48.

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" - The Federal Court held that a review of s. 9(1) as a whole led to the conclusion that in order to be entitled to an official mark, the institution claiming the mark had to be a public authority in Canada - The provisions of s. 9(1) could be grouped in four categories: provisions preventing use of a specific mark or symbol, provisions that Parliament clearly intended to have apply to foreign entities, provisions that intended to apply only to Canadian entities (including s. 9(1)(n)(iii)) and provisions intended to apply to any entity regardless of location - Given this, if Parliament had intended that s. 9(1)(n)(iii) apply to foreign public authorities, the statute would have said so explicitly - See paragraphs 52 to 55.

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 Federal Court 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 - See paragraphs 60 to 68.

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 Federal Court 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) - See paragraphs 70 to 79.

Trademarks, Names and Designs - Topic 4412

Trademarks - Practice - Standing - 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 - USPS conceded that CPC had sufficient standing in relation to 11 of the official marks - However, the USPS submitted that CPC was not "directly affected" by the Registrar's decisions in relation to the "United States Postal Service" name - Accordingly, CPC did not have standing to challenge the Registrar's decision - The Federal Court held that CPC had standing - By virtue of s. 5(1)(a) of the Canada Post Corporation Act, one of the objects of the CPC was the collection, transmission and delivery of mail between Canada and places outside of Canada, which included the United States - As a consequence of the publication of the "United States Postal Service" official mark, CPC would be limited in its ability to combine the words "United States" and "postal service" in promoting its services, interfering with its ability to fulfill its statutory objectives, thereby directly adversely affecting CPC's interests - See paragraph 13.

Trademarks, Names and Designs - Topic 4412

Trademarks - Practice - Standing - 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 - USPS conceded that CPC had sufficient standing in relation to 11 of the official marks - However, the USPS submitted that CPC was not "directly affected" by the Registrar's decisions in relation to the "Eagle Design" - Accordingly, CPC did not have standing to challenge the Registrar's decision - The Federal Court held that CPC had standing - CPC was directly affected by the Registrar's decision in relation to the USPS "Eagle Design" - CPC was the owner of an official mark and a trademark, both of which were known as the "Wing Design" - Both the USPS and CPC marks were used in connection with the collection, processing and delivery of mail and both parties offered at least some of these services in Canada - Both marks involved stylized flying figures, pointing to the right, with "speed marks" suggesting haste - There were enough similarities between the two marks that CPC could potentially suffer a direct adverse impact from the Registrar's decision - See paragraphs 14 to 16.

Cases Noticed:

Ontario Association of Architects v. Association of Architectural Technologists of Ontario (2002), 291 N.R. 61; 19 C.P.R.(4th) 417; 2002 FCA 218, refd to. [para. 10].

Independent Contractors and Business Association et al. v. Canada (Minister of Labour) et al. (1998), 225 N.R. 19 (F.C.A.), refd to. [para. 12].

FileNet Corp. v. Registrar of Trademarks et al. (2001), 209 F.T.R. 195; 2001 FCT 865, refd to. [para. 17].

United Grain Growers Ltd. v. Lang Michener, [2001] 3 F.C. 102; 269 N.R. 385; 2001 FCA 66, refd to. [para. 26].

Bab Holdings Inc. v. Big Apple Ltd. (2002), 216 F.T.R. 163; 2002 FCT 72, refd to. [para. 27].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91; 5 C.P.R.(4th) 180 (F.C.A.), refd to. [para. 28].

Mihaljevic v. British Columbia (1988), 22 F.T.R. 59; 23 C.P.R.(3d) 80 (T.D.), refd to. [para. 33].

Canadian Jewish Congress v. Chosen People Ministries Inc. et al. (2002), 219 F.T.R. 122; 19 C.P.R.(4th) 186; 2002 FCT 613, affd. (2003), 311 N.R. 162; 27 C.P.R.(4th) 193; 2003 FCA 272, refd to. [para. 35].

Rizzo & Rizzo Shoes Ltd. (Bankrupt), Re, [1998] 1 S.C.R. 27; 221 N.R. 241; 106 O.A.C. 1, refd to. [para. 38].

Medovarski v. Canada (Ministre de la Citoyenneté et de l'Immigration) (2005), 339 N.R. 1; 2005 SCC 51, refd to. [para. 44].

Canada Post Corp. v. Post Office, [2001] 2 F.C. 63; 191 F.T.R. 300; 8 C.P.R.(4th) 289 (T.D.), not folld. [para. 56].

Vapor Canada Ltd. et al. v. MacDonald, [1977] 2 S.C.R. 134; 7 N.R. 477, refd to. [para. 63].

Baker v. Canada (Minister of Citizenship and Immigration), [1999] 2 S.C.R. 817; 243 N.R. 22, refd to.[para. 63].

Salomon v. Commissioners of Customs and Excise, [1967] 2 Q.B. 116 (C.A.), refd to. [para. 64].

National Corn Growers' Association et al. v. Canadian Import Tribunal, [1990] 2 S.C.R. 1324; 114 N.R. 81, refd to. [para. 64].

Insurance Corp. of British Columbia v. Registrar of Trademarks (1979), 44 C.P.R.(2d) 1 (F.C.T.D.), refd to. [para. 76].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 9(1)(n)(iii) [para. 30].

Authors and Works Noticed:

Hughes, Roger T., and Ashton, Toni Polson, Hughes on Trade Marks, §5 [para. 63].

Sullivan, Ruth, Sullivan and Dreidger, on the Construction of Statutes (4th Ed. 2002), p. 80 [para. 44].

Counsel:

A. David Morrow and Jeremy E. Want, for the applicant;

Anthony Prenol and Antonio Turco, for the respondent.

Solicitors of Record:

Smart & Biggar, Ottawa, Ontario, for the applicant;

Blake Cassels & Graydon LLP, Toronto, Ontario, for the respondent.

This application was heard on October 4 and 5, 2005, at Ottawa, Ontario, by Mactavish, J., of the Federal Court, who delivered the following judgment on November 30, 2005.