Leave Application denial has implications for Trade-mark Law

Back on June 28, 2007, the Supreme Court of Canada (“SCC”) denied leave to appeal in the case of United States Postal Service v Canada Post Corporation, 2005 FC 1630. Here’s a link to Clark Wilson LLP’s trademark law blog coverage of the implications of the decision – effectively that since the SCC has decided not to speak on the issue, it is now clear that to qualify for protection as an “official mark” in Canada, one must be a Canadian authority. Please click on through for some details of the case.

Additionally, in arguing for its position at the Federal Court (the Federal Court of Appeal simply affirmed the decision), the US Postal Service (“USPS”) raised an interesting international law argument. The rejection of this argument speaks to the extent of a Canadian international treaty obligations.

The USPS argued that requiring the public authority to be Canadian for the sake of s. 9(1)(n)(iii) of the Trade-Marks Act, RSC 1985, c T-13 offends Canada’s obligations under the national treatment provision in article 2 of the Paris Convention. This provision, in essence, requires that governments treat foreigners no worse than their own nationals with regards to the rights in the treaty. As quoted at para 61 of the decision, the text of the provision is as follows:

(1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.

Though ratified, it should be noted that the judgment points out that “the Convention has not…been implemented into Canadian law,” Nevertheless, Mactavish J. goes on to explain why he thinks the national treatment clause would have offered no help to the USPS regardless.

At para 62, the decision distinguishes what article 2 applies to:

The term ‘industrial property’ is defined in Article 1 of the Convention as ‘patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin…

At para 66, the decision outlines that ‘official marks’ doesn’t fall into this category:

the Paris Convention does not address true subparagraph 9(1)(n)(iii)-type ‘official marks,’ restricting its reach to ‘trademarks, service marks, trade names, indications of source or appellations of origin…

As such, at para 68, the decision concludes:

I am therefore satisfied that the Paris Convention does not extend to cover official marks of the type in issue in this case. As a consequence, the issue of conflict with the ‘National Treatment’ provisions of the Paris Convention does not arise in this case.

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