In Canada Post Corporation v. United States Postal Service, 2007 FCA 10, the Federal Court of Appeal confirmed that Official Mark protection is not available to foreign public authorities who are not under Canadian governmental control. Leave to appeal to the Supreme Court of Canada was denied on June 28, 2007.
In December 2001 and January 2002, the Registrar gave public notice of the adoption and use in Canada by the United States Postal Service of thirteen Official Marks. Canada Post Corporation applied for judicial review of the decision, and was successful in having it set aside. The United States Postal Service appealed.
Section 9(1)(n)(iii) of the Canadian Trade-marks Act precludes the adoption of any mark consisting of, or so closely resembling as to be likely to be mistaken for, an Official Mark in respect of which the Registrar has given public notice. At trial, the Federal Court interpreted the wording of the statute to indicate that an Official Mark must have been adopted and used by a Canadian public authority, i.e. one subject to Canadian governmental control. Mere use of the Official Mark in Canada by a foreign public authority was considered insufficient. The Court of Appeal agreed that, in order to fulfill Parliament's intentions, the government exercising control over the public authority must be a Canadian government.
Since Official Marks are largely a Canadian concept and are not addressed by the Paris Convention for the Protection of Industrial Property, the Federal Court Trial Division found no need, under this treaty, to extend the protection available to Canadian public authorities to nationals of other member countries. Likewise, the Court of Appeal was not persuaded that the foregoing interpretation of the Official Mark provisions in Canada's Trade-marks Act offends the Paris Convention or the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
The Court's decision delivers welcome clarification of this particular requirement for Official Mark protection.