Federal Court of Appeal Affirms Decision on Official Marks

In November, 2005, the Federal Court of Canada decided a significant trade-mark dispute involving Section 9 official marks. Canada Post Corporation (Canada Post) brought an application to judicially review decisions of the Canadian Registrar of Trade-marks to notify the public of its adoption of 13 official marks owned by the United States Postal Service (USPS) pursuant to Section 9(n)(iii) of the Trade-marks Act. The Federal Court overturned the Registrar's decision and ruled in favour of Canada Post on the basis that USPS is not entitled to the official marks as it is not a public authority in Canada within the meaning of section 9(1)(n)(iii). The Court held that the provision in question should be interpreted to mean that the public authority must be "in Canada". For assistance in arriving at this decision, the Court read the French version of the statue which more clearly requires that the public authority be in Canada. The Court adopted this meaning of the French version based on a review of the legislative history of the provision and the shared or common meaning rule of interpretation: "where two versions of bilingual legislation do not say the same thing, the shared meaning, which is normally the narrower meaning, ought to be adopted." In January, 2007, the USPS appeal was dismissed by the Federal Court of Appeal. The appellate court held that a public authority must be subject to Canadian government control and engage in activities that benefit the Canadian public, in order to take advantage of Section 9. In addition, the Court found that this interpretation did not offend the Paris Convention or TRIPS. For the full reasons for judgment in the Federal Court of Appeal, visit: http://tinyurl.com/yog386 For the decision appealed from, see: http://tinyurl.com/29zt4s Summary by: Oren Weichenberg