T‑64‑02
2005 FC 1630
Canada Post Corporation (Applicant)
v.
United States Postal Service (Respondent)
Indexed as: Canada Post Corp. v. United States Postal Service (F.C.)
Federal Court, Mactavish J.—Ottawa, October 4, 5 and November 30, 2005.
Trade‑marks — Judicial review of Registrar of Trade‑marks’ decision giving public notice of adoption, use of official marks by United States Postal Service (USPS), thus preventing Canada Post Corporation (CPC), pursuant to Trade‑marks Act, s. 9(1)(n)(iii) from using these or similar marks in association with postal wares, services unless already used prior to public notice — (1) Whether public authority referred to in s. 9(1)(n)(iii) must be public authority in Canada — That term not defined in Act — Shared, common meaning interpretation rule applied — French version of provision adopted — Official marks available only to public authorities in Canada — That conclusion buttressed by rest of s. 9(1), review of legislative history of s. 9(1)(n)(iii) — Canada Post Corp. v. Post Office, holding Act, s. 9(1)(n)(iii) not restricted to Canadian public authorities, not followed as decided before F.C.A. holding s. 9(1)(n)(iii) not to be given expansive meaning — Convention for the Protection of Industrial Property not applicable as not addressing official marks — (2) Whether USPS public authority in Canada — Not sufficient for entity in question to be subject to control outside Canada — Public authority required to be subject to governmental control within Canada — USPS not subjected to such control, thus not public authority in Canada — Application dismissed.
Construction of Statutes — Trade‑marks Act, s. 9(1)(n)(iii) preventing any person from adopting mark “adopted and used by any public authority, in Canada as an official mark” — Whether “public authority” required to be public authority in Canada — As term not defined in Act, necessary to have regard to wording of provision — Ambiguity in English version as to whether “in Canada” modifying “adopted and used” or “by any public authority” — French version not ambiguous — Applying shared or common meaning interpretation rule, French meaning adopted: “in Canada” modifying “by any public authority” — This conclusion buttressed by review of legislative history of s. 9(1)(n)(iii) and predecessor provisions in Unfair Competition Act — History revealing comma creating ambiguity first appearing in version of Act published in 1985 Revised Statutes of Canada — Amendment made pursuant to Statute Revision Act by Statute Revision Commission — Commission precluded from changing substance of enactment — Insertion of comma apparently not conscious legislative choice — Review of Act, s. 9 as a whole leading to conclusion Parliament would have explicitly so stated had it been its intention for s. 9(1)(n)(iii) to apply to foreign public authorities.
This was an application for judicial review of a decision of the Registrar of Trade‑marks to give public notice of the adoption and use of 13 official marks by the United States Postal Service (USPS), thus preventing the Canada Post Corporation (CPC), pursuant to subparagraph 9(1)(n)(iii) of the Trade‑marks Act, from using any of these or similar marks in association with its postal wares and services unless it had already been using the marks prior to the dates on which the Registrar gave public notice.
At issue was whether the USPS was entitled to claim the benefit of subparagraph 9(1)(n)(iii) in relation to official marks. Making this determination required that two questions be answered: (1) whether subparagraph 9(1)(n)(iii) of the Act requires that the “public authority” be a public authority in Canada, and (2) whether the USPS is a “public authority” within the meaning of subparagraph 9(1)(n)(iii) of the Act.
Held, the application should be allowed.
(1) The principal requirement for the publication of an official mark is that the party seeking publication be a “public authority”. That term is not defined in the Act. It was therefore necessary to have regard to the wording of subparagraph 9(1)(n)(iii) to determine whether a “public authority” has to be a public authority in Canada. The French and English versions of subparagraph 9(1)(n)(iii) are not identical. In English, because of the comma after “public authority” it is not clear whether the words “in Canada” are intended to modify the words “adopted and used” or “by any public authority.” The French version is clear: the words “in Canada” modify the phrase “by any public authority.” The shared or common meaning interpretation rule was applied (as the Supreme Court of Canada stated that it should in the case of bilingual legislation) and the French meaning adopted. Furthermore, the French version refers to “une autorité publique” (a public authority) rather than to “any public authority.” Once again, applying the shared or common meaning rule, the narrower French version was adopted.
The conclusion that the public authority in question in subparagraph 9(1)(n)(iii) of the Act must be a public authority in Canada was buttressed by a review of the legislative history of subparagraph 9(1)(n)(iii) and its predecessor provisions in the Unfair Competition Act. This history revealed that the comma in the English version of the Act that creates the ambiguity first appeared in the version of the Act published in the 1985 Revised Statutes of Canada. It found its way into the provision through one of the “housekeeping”‑type amend-ments authorized by the Statute Revision Act, which does not allow changes to the substance of any enactment. The insertion of the comma thus did not appear to have been a conscious legislative choice made by Parliament. This further militated in favour of adopting the meaning reflected by the French version of the Act, which more faithfully reflects Parliament’s intent in enacting subparagraph 9(1)(n)(iii).
Finally, a review of subsection 9(1) of the Act as a whole led to the conclusion that the words “in Canada” should be read as modifying the words “any public authority.” If Parliament had intended that subparagraph 9(1)(n)(iii) apply to foreign public authorities, the statute would have said so explicitly.
The Court’s decision in Canada Post Corp. v. Post Office, which held that subparagraph 9(1)(n)(iii) of the Act is not restricted to “Canadian public authorities,” was not followed as it was decided prior to Ontario Assn. of Architects v. Assn. of Architectural Technologists of Ontario, wherein the Federal Court of Appeal held that the extensive powers conferred by subparagraph 9(1)(n)(iii) are such that the provision should not be given an expansive meaning.
The Paris Convention for the Protection of Industrial Property, which Canada ratified in 1951 provides that 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 same protection then granted by law. The protections available to public authorities under subparagraph 9(1)(n)(iii) are largely a Canadian creation. The Paris Convention does not assist the USPS as it does not address these types of protection (i.e. official marks).
(2) The test to determine whether a party is a public authority was articulated in Ontario Assn. of Architects. First, it must be determined whether the entity in question is subject to government control. Then, the Court must determine the extent to which the organization’s activities benefit the public. The question here was not whether the USPS was a public authority, but whether it was a public authority in Canada. There was no case law on the point of whether the element of government control has to be exercised by a Canadian government, or whether it is sufficient if the entity in question is subject to control outside of Canada. Given that the extensive benefits afforded to the holders of official marks exist only within the geographic confines of Canada, it follows that any injury that will be suffered by trade‑mark owners and the public will be suffered by Canadian trade‑mark owners and the Canadian public. As a consequence, in order to satisfy the test set out in Ontario Assn. of Architects, a public authority must be subject to governmental control within Canada. The USPS was not subjected to such control and was therefore not a public authority in Canada for the purposes of subparagraph 9(1)(n)(iii).
statutes and regulations judicially
considered
Canada Post Corporation Act, R.S.C., 1985, c. C‑10, s. 5(1)(a), (2)(e).
Canada Post Corporation Act, S.C. 1980-81-82-83, c. 54.Federal Courts Act, R.S.C., 1985, c. F‑7, ss. 1 (as am. by S.C. 2002, c. 8, s. 14), 18.1(1) (as enacted by S.C. 1990, c. 8, s. 5).
Immigration and Refugee Protection Act, S.C. 2001, c. 27.
Paris Convention for the Protection of Industrial Property, March 20, 1883, as revised at Brussels on December 14, 1990, at Washington on June 2, 1911, at the Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, and as amended on September 28, 1979, Arts. 1, 2, 6ter.
Postal Reorganization Act, 39 U.S.C. § 101, 201 (2000).
Statute Revision Act, R.S.C., 1985, c. S‑20, s. 6(e),(f),(h).
Trade‑marks Act, R.S.C., 1985, c. T‑13, ss. 2 “Convention”, 9(1) (as am. by S.C. 1990, c. 14, s. 8; 1993, c. 15, s. 58; c. 44, s. 226; 1994, c. 47, s. 191; 1999, c. 31, s. 209(F)), 11, 12 (as am. by S.C. 1990, c. 20, s. 81; 1993, c. 15, s. 59(F); 1994, c. 47, s. 193).
Unfair Competition Act, 1932 (The), S.C. 1932, c. 38, s. 14(1)(j).
cases judicially considered
not followed:
Canada Post Corp. v. Post Office, [2001] 2 F.C. 63; (2000) 8 C.P.R. (4th) 289; 191 F.T.R. 300 (T.D.).
applied:
Ontario Assn. of Architects v. Assn. of Architectural Technologists of Ontario, [2003] 1 F.C. 331; (2002), 215 D.L.R. (4th) 550; 19 C.P.R. (4th) 417; 291 N.R. 61; 2002 FCA 218; Big Apple Ltd. v. Bab Holdings, Inc. (2002), 16 C.P.R. (4th) 427; 216 F.T.R. 163; 2002 FCT 72; Medovarski v. Canada (Minister of Citizenship and Immigration); Esteban v. Canada (Minister of Citizenship and Immigration), [2005] 2 S.C.R. 539; (2005) 258 D.L.R. (4th) 193;339 N.R. 1; 2005 SCC 51.
considered:
United Grain Growers Ltd. v. Lang Michener, [2001] 3 F.C. 102; (2001), 12 C.P.R. (4th) 89; 269 N.R. 385; 2001 FCA 66; Canadian Jewish Congress v. Chosen People Ministries, Inc., [2003] 1 F.C. 29; (2002), 214 D.L.R. (4th) 553; 19 C.P.R. (4th) 186; 219 F.T.R. 122; 2002 FCT 613; affd (2003), 231 D.L.R. (4th) 309; 27 C.P.R. (4th) 193; 2003 FCA 272; Insurance Corporation of British Columbia v. Registrar of Trade Marks, [1980] 1 F.C. 669; (1979), 44 C.P.R. (2d) 1 (T.D.).
referred to:
Independent Contractors and Business Assn. v. Canada (Minister of Labour) (1998), 6 Admin. L.R. (3d) 92; 39 C.L.R. (2d) 121; 225 N.R. 19 (F.C.A.); FileNET Corp. v. Canada (Registrar of Trade‑marks), [2002] 1 F.C. 266; (2001), 13 C.P.R. (4th) 385; 209 F.T.R. 195; 2001 FCT 865; Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145; (2000), 5 C.P.R. (4th) 180; 252 N.R. 91 (C.A.); Mihaljevic v. British Columbia (1988), 23 C.P.R. (3d) 80; 22 F.T.R. 59 (F.C.T.D.); Rizzo & Rizzo Shoes Ltd. (Re), [1998] 1 S.C.R. 27; (1998), 36 O.R. (3d) 418; 154 D.L.R. (4th) 193; 50 C.B.R. (3d) 163; 33 C.C.E.L. (2d) 173; 221 N.R. 241; 106 O.A.C. 1; MacDonald et al. v. Vapour Canada Ltd., [1977] 2 S.C.R. 134; (1976), 66 D.L.R. (3d) 1; 22 C.P.R. (2d) 1; 7 N.R. 477; Baker v. Canada (Minister of Citizenship and Immigration), [1999] 2 S.C.R. 817; (1999), 174 D.L.R. (4th) 193; 14 Admin. L.R. (3d) 173; 1 Imm. L.R. (3d) 1; 243 N.R. 22; Salomon v. Commissioners of Customs and Excise, [1967] 2 Q.B. 116 (C.A.); National Corn Growers Assn. v. Canada (Import Tribunal), [1990] 2 S.C.R. 1324; (1990), 74 D.L.R. (4th) 449; 45 Admin. L.R. 161; 114 N.R. 81.
authors cited
Sullivan, Ruth. Sullivan and Driedger on the Construction of Statutes, 4th ed.Toronto: Butterworths, 2002.
Hughes, Roger T. Hughes on Trade Marks, 2nd ed. Markham: LexisNexis Canada, 2005.
APPLICATION for judicial review of a decision of the Registrar of Trade‑marks to give public notice of the adoption and use of official marks by the United States Postal Service, thus preventing any person, pursuant to subparagraph 9(1)(n)(iii) of the Trade‑marks Act, from adopting these marks. Application allowed.
appearances:
A. David Morrow and Jeremy E. Want for applicant.
Anthony M. Prenol and Antonio Turco for respondent.
solicitors of record:
Smart & Biggar, Ottawa, for applicant.
Blake, Cassels & Graydon LLP, Toronto, for respondent.
The following are the reasons for order and order rendered in English by
[1]Mactavish J.: This is an application brought by Canada Post Corporation (CPC) to judicially review decisions of the Registrar of Trade‑marks to give public notice of the adoption and use of 13 official marks by the United States Postal Service (USPS). These marks are: “United States Postal Service”, “Express Mail”, First‑class Mail”, “Standard A Mail”, “Standard B Mail, “Parcel Select”, Priority Mail”, “Global Priority Mail”, “Delivery Confirmation”, “Signature Confirmation”, “Global Express Guaranteed”, “Netpost” and the USPS “Eagle Design”.
[2]As a result of the actions of the Registrar of Trade‑marks, CPC is prevented from using any of these marks, or any marks closely resembling them, in association with its postal wares and services, unless it had already been using the marks prior to the dates on which the Registrar gave public notice in the Trade‑marks Journal of their adoption and use in Canada by the USPS as official marks.
[3]CPC asserts that the USPS is not entitled to official marks as it is not a public authority in Canada. CPC further asserts that the USPS neither adopted nor used the marks in question for wares or services in Canada prior to the publication dates. In the alternative, CPC says that USPS is not entitled to rely on any use that it may have made of the disputed marks in Canada, as this use was unlawful as it violated provisions of the Trade‑marks Act, R.S.C., 1985, c. T‑13 [the Act], the Canada Post Corporation Act, R.S.C., 1985, c. C-10 and the Immigration and Refugee Protection Act, S.C. 2001, c. 27.
[4]Moreover, CPC argues that the acceptance of certain of the marks for publication by the Registrar of Trade‑marks was contrary to the public order, as the marks in question are identical, or essentially identical, to terminology in common use by other postal authorities to describe postal products and services. According to CPC, some of these terms have also been adopted as generic terms in the documentation of the Universal Postal Union, an international union of postal authorities.
[5]For the reasons that follow, I am of the view that this application must be allowed, as I am satisfied that the USPS is not entitled to official marks as it is not a “public authority” in Canada within the meaning of subparagraph 9(1)(n)(iii) of the Trade‑marks Act.
The Parties
[6]CPC is a Crown Corporation established in 1981 by the Canada Post Corporation Act [S.C. 1980-81-82 -83, c. 54]. CPC succeeds the Post Office Department of the Government of Canada. The objects of CPC include the establishment and operation of a postal service in Canada, the manufacture and provision of such products and services as are necessary or incidental to the postal service, and the provision of such other services as are capable of being conveniently provided in the course of carrying out the other objects of the CPC.
[7]The federal government continues to exercise significant control over CPC. By way of example, the President of the Corporation is appointed by the Governor in Council, as are the members of the Board of Directors and the Chairman of the Board.
[8]In carrying out its objects, paragraph 5(2)(e) of the Canada Post Corporation Act obliges the CPC to have regard to, amongst other things, the need to maintain a corporate identity program approved by the Governor in Council that reflects the role of the CPC as an institution of the Government of Canada.
[9]The USPS is an independent establishment of the executive branch of the Government of the United States of America, established to provide universal mail and delivery services, as well as ancillary services such as consulting services. The basic function of the USPS is to “provide postal services to bind the Nation together through the personal, educational, literary, and business correspondence of the people”: [Postal Reorganization Act], 39 U.S.C. § 101(a) (2000).
Procedural History
[10]Although CPC initially commenced this proceeding as “an application for judicial review and/or appeal,” as a result of the decision of the Federal Court of Appeal in Ontario Assn. of Architects v. Assn. of Architectural Technologists of Ontario, [2003] 1 F.C. 331 (C.A.), CPC now acknowledges that it does not have standing to appeal the decisions in issue, as it was not a party to the original proceedings before the Registrar of Trade‑marks. As a consequence, the matter proceeded solely as an application for judicial review.
CPC’s Standing to Bring the Application for Judicial Review
[11]The USPS concedes that CPC has a sufficient interest in relation to 11 of the official marks in issue as to give it standing to challenge the Registrar’s decisions by way of judicial review. However, the USPS submits that CPC is not “directly affected” by the Registrar’s decisions in relation to the “United States Postal Service” name and the “Eagle Design”. As a consequence, the USPS says that CPC does not have standing to challenge the Registrar’s decisions to give public notice in relation to these two marks.
[12]Subsection 18.1(1) [as enacted by S.C. 1990, c. 8, s. 5] of the Federal Courts Act, R.S.C., 1985, c. F‑7 [s. 1, as am. by S.C. 2002, c. 8, s. 14], confers standing to bring an application for judicial review on anyone who is “directly affected by the matter in respect of which the relief is sought.” A party will be deemed to have been “directly affected” by a decision where it could either benefit from, or suffer a direct adverse impact from a decision: Independent Contractors and Business Assn. v. Canada (Minister of Labour) (1998), 6 Admin. L.R. (3d) 92 (F.C.A.), at paragraph 30.
[13]In this case, I am satisfied that CPC has a sufficiently direct interest in the matter as it relates to the “United States Postal Service” official mark as to give it standing to seek relief by way of judicial review. By virtue of paragraph 5(1)(a) of the Canada Post Corporation Act, one of the objects of the CPC is the collection, transmission and delivery of mail between Canada and places outside of Canada, which would include the United States. As a consequence of the publication of the “United States Postal Service” official mark, CPC will henceforth 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.
[14]I am also satisfied that CPC is directly affected by the Registrar’s decision in relation to the USPS “Eagle Design”. In this regard, it should be noted that the “Eagle Design” is depicted as:
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[15]CPC is the owner of an official mark and a trade‑mark, both of which are known as the “Wing Design”. This mark has been used extensively in Canada in association with CPC’s services. The Wing Design is depicted as:
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[16]Both the USPS and CPC marks are used in connection with the collection, processing and delivery of mail, and according to the USPS, both parties offer at least some of these services in Canada. Both marks involve stylized flying figures, pointing to the right, with “speed marks” suggesting haste. In these circumstances, I am satisfied that there are enough similarities between the two marks that CPC could potentially suffer a direct adverse impact from the Registrar’s decision.
[17]These considerations are, in my view, sufficient to give CPC the necessary standing to challenge this decision as it relates to the “Eagle Design”: see FileNET Corp. v. Canada (Registrar of Trade‑marks), [2002] 1 F.C. 266 (T.D.).
Background
[18]According to the evidence, the USPS has been advertising its services in Canada since 1999. In addition, USPS employees have been travelling to Canada on a regular basis, to promote and sell the USPS’ services to customers in Canada who have high‑volume mailings to the United States. The USPS provides consulting services to businesses in Canada, and assists with the preparation and delivery of mail to the United States.
[19]Once it is ready for delivery, this mail is transferred to the closest USPS postal unit in the United States by trucks contracted to USPS for this purpose. The mail is then put into the USPS mail system to be delivered to its final destinations in the United States.
[20]By letters dated June 21 and October 17, 2001, the USPS requested that the Registrar of Trade‑marks give public notice, pursuant to the provisions of subparagraph 9(1)(n)(iii) of the Trade‑marks Act, that the USPS had adopted and used the marks in issue as “official marks” for wares and services.
[21]In response, the Registrar of Trade‑marks asked the USPS to provide evidence of its status as a public authority. The USPS provided extracts of 39 U.S.C. § 201 (2000), which establish that it is an independent establishment of the Government of the United States. No question was raised by the Registrar as to whether the USPS was a public authority in Canada.
[22]Although no formal decision was rendered in this regard, it appears that the Registrar accepted that the USPS is a public authority for the purposes of subparagraph 9(1)(n)(iii) of the Trade‑marks Act, as notice was given for 12 of the 13 marks in the December 12, 2001 edition of the Trade‑marks Journal. In the January 9, 2002 edition of the Journal [Vol. 49, No. 2463], the Registrar gave the requested notice in respect of the “Netpost” mark. It is the decisions to give this public notice that underlie this application for judicial review.
Issues
[23]As was noted at the commencement of this decision, CPC has raised a number of issues in relation to the USPS’s entitlement to the official marks in question. These include a threshold question as to whether the Registrar erred in finding that the USPS is a public authority for the purposes of subparagraph 9(1)(n)(iii) of the Trade‑marks Act.
[24]For the reasons that follow, I am of the view that the answer to this question is determinative of the application, and that it is therefore unnecessary to address the remaining issues.
Standard of Review
[25]There are two questions that must be answered in deciding whether the USPS is entitled to claim the benefit of subparagraph 9(1)(n)(iii) of the Trade‑marks Act in relation to official marks.
[26]The first of these is whether, properly interpreted, subparagraph 9(1)(n)(iii) of the Trade‑ marks Act requires that the “public authority” be a public authority in Canada. This involves a question of statutory interpretation. As was noted by the Federal Court of Appeal in United Grain Growers Ltd. v. Lang Michener, [2001] 3 F.C. 102, at paragraph 9, questions as to the construction of the Trade‑marks Act are outside the expertise of the Registrar of Trade‑marks.
[27]Moreover, in Big Apple Ltd. v. Bab Holdings, Inc. (2002), 16 C.P.R. (4th) 427 (F.C.T.D.), at paragraph 8, this Court held that decisions of the Registrar of Trade‑marks involving questions of law are reviewable against a standard of correctness. I agree.
[28]The second question is whether the USPS is itself a “public authority” within the meaning of subparagraph 9(1)(n)(iii) of the Trade‑marks Act. This is a question of mixed fact and law, which would normally be reviewed against a standard of reasonableness, given that the USPS did not adduce any additional evidence before this Court on this issue that would have materially affected the Registrar’s findings of fact or the exercise of his discretion: Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.), at paragraph 51.
[29]However, in order to answer this specific question of mixed fact and law, it is necessary to have a proper understanding of the statutory definition of “public authority,” and the scope of the test to be used in determining whether a given entity is indeed a “public authority.” These are pure questions of law, which are also reviewable against the correctness standard.
Principles Governing Official Marks Under the Trade‑marks Act
[30]Official marks are evidently a largely Canadian concept, and are governed by the provisions of subparagraph 9(1)(n)(iii) of the Trade‑marks Act, which provides that:
9. (1) No person shall adopt in connection with a business, as a trade‑mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,
. . .
(n) any badge, crest, emblem or mark
. . .
(iii) adopted and used by any public authority, in Canada as an official mark for wares or services,
in respect of which the Registrar has, at the request of . . .[the] public authority . . . given public notice of its adoption and use; [Emphasis added.]
[31]Subparagraph 9(1)(n)(iii) prohibits the adoption of official marks by others, whereas section 11 of the Act prohibits the use of the marks by others. The registration of the marks by others is prohibited by subsection 12 [as am. by S.C. 1990, c. 20, s. 81; 1993, c. 15, s. 59(F); 1994, c. 47, s. 193] of the Act.
[32]Subparagraph 9(1)(n)(iii) gives extensive protection to the holders of official marks, including substantial advantages over the rights accorded to owners of ordinary trade‑marks: Ontario Assn. of Architects, at paragraph 4. By way of example, an official mark need not serve to distinguish wares or services: it may be merely descriptive, and may also be confusing with the mark of another: Ontario Assn. of Architects, at paragraph 63.
[33]Once public notice has been given with respect to the adoption and use of an official mark, the mark is “hardy and virtually unexpungeable”: Mihaljevic v. British Columbia (1988), 23 C.P.R. (3d) 80 (F.C.T.D.), at page 89.
[34]For these reasons, the Federal Court of Appeal has stated that subparagraph 9(1)(n)(iii) of the Trade‑marks Act should not be given an expansive meaning: Ontario Assn. of Architects, at paragraph 64.
[35]The principal requirement for the publication of an official mark is that the party seeking publication be a “public authority”: Canadian Jewish Congress v. Chosen People Ministries, Inc., [2003] 1 F.C. 29 (T.D.); affd (2003) 231 D.L.R. (4th) 309 (F.C.A.). The term “public authority” is not defined in the Act.
[36]While conceding that the USPS is a public authority, CPC nevertheless says that the USPS is not entitled to claim the benefit of subparagraph 9(1)(n)(iii) of the Trade‑marks Act, as it is not a public authority in Canada. In contrast, the USPS contends that it is a public authority, and that it has adopted and used the marks in issue in Canada. As a consequence, the USPS says it is entitled to the extensive protection afforded to official marks.
[37]The first question, then, is whether, properly interpreted, subparagraph 9(1)(n)(iii) of the Trade‑marks Act requires that, in order to be able to claim the benefit of the provision, the public authority in issue must be a public authority in Canada.
Does the Public Authority have to be a Public Authority in Canada?
[38]In answering this question, regard must be had to the wording of subparagraph 9(1)(n)(iii) of the Trade‑marks Act. Regard must also be had to the admonition of the Supreme Court of Canada that when approaching a question of statutory interpretation, the words of an Act are to be read in their entire context, in their grammatical and ordinary sense, harmoniously with the scheme of the Act, the object of the Act, and the intention of Parliament: see Rizzo & Rizzo Shoes Ltd. (Re), [1998] 1 S.C.R. 27, at paragraph 21.
[39]In this case, the task of interpreting the provision in question is complicated by the fact that the English and French language versions of the legislation are not identical.
[40]In this regard it should be noted that the English version of subparagraph 9(1)(n)(iii) of the Trade‑marks Act states that in order for a mark to be a proper official mark, it must have been “adopted and used by any public authority, in Canada as an official mark for wares or services.”
[41]However, the French version of the same provision states that the mark in question must have been “adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou services.”
[42]Thus, in the English version, there is a comma after the phrase “public authority.” This results in the section being somewhat ambiguous, as it is not entirely clear as to whether the words “in Canada” are intended to modify the words “adopted and used” or “by any public authority.”
[43]In contrast, the absence of the comma in the French version of subparagraph 9(1)(n)(iii) of the Act makes it clear that the official mark must have been “adopté et employé par une autorité publique au Canada” [emphasis added].
[44]As the Supreme Court of Canada recently restated in Medovarski v. Canada (Minister of Citizenship and Immigration); Esteban v. Canada (Minister of Citizenship and Immigration), [2005] 2 S.C.R. 539, at paragraph 25, bilingual legislation is to be interpreted by applying the shared or common meaning rule. That is, 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, unless for some reason, that meaning is unacceptable: See also Ruth Sullivan, Sullivan and Driedger on the Construction of Statues, 4th ed. (Toronto: Butterworths, 2002), at page 80.
[45]In this case, the English version of the legislation is capable of sustaining two different meanings, whereas the French version is only capable of one meaning. Applying the shared or common meaning rule, I am thus satisfied that the words “in Canada” / “au Canada” modify the phrase “by any public authority” / “par une autorité publique”. As a consequence, in order to be entitled to an official mark, the public authority in question must be a public authority in Canada.
[46]The USPS also points to the fact that the English version of subparagraph 9(1)(n)(iii) refers to “any public authority” [emphasis added] as support for its contention that the protections afforded by the provision are not to be restricted to public authorities in this country. Were that the case, the USPS says, the legislation would refer to “Canadian public authority,” or, at the very least, the word “a” would have been used to modify “public authority” rather than the word “any.”
[47]Here, once again, there is a difference between the English and French versions of the provision. The French version of subparagraph 9(1)(n)(iii) does exactly what the USPS says would be necessary to give the legislation the restricted meaning favoured by CPC. That is, the French version refers to “une autorité publique.” In other words, the word “a” is indeed used in the French version of subparagraph 9(1)(n)(iii) to modify “public authority.”
[48]Once again, applying the shared or common meaning rule, I am of the view that the narrower French version ought to be adopted, and that the provision should be read to limit the availability of official marks to public authorities in this country.
[49]My conclusion in this regard is buttressed by a review of the legislative history of subparagraph 9(1)(n)(iii) of the Trade‑marks Act, and its predecessor provisions in The Unfair Competition Act, 1932, S.C. 1932, c. 38 [paragraph 14(1)(j)], which discloses that the comma in the English version of the provision was not originally present in the legislation. The comma first appeared in the version of the Trade‑marks Act published in the 1985 Revised Statutes of Canada, R.S.C., c. T‑13.
[50]It appears that the comma found its way into the provision through one of the “housekeeping”‑type amendments authorized by the Statute Revision Act, R.S.C., 1985, c. S‑20. Paragraph 6(e) of this Act authorizes the Statute Revision Commission to “make such alterations to the language of statutes as may be required to preserve a uniform mode of expression, without changing the substance of any enactment” [emphasis added]. Similarly, the Commission can make minor improvements to the language of statutes “as may be required to bring out more clearly the intention of Parliament” (paragraph 6(f)). However, here once again, the Commission is precluded from changing the substance of any enactment. Paragraph 6(h) of the Statute Revision Act also empowers the Commission to correct editing, grammatical or typographical errors in legislation.
[51]In other words, the insertion of the comma into the English version of subparagraph 9(1)(n)(iii) of the Trade‑marks Act does not appear to have been a conscious legislative choice made by Parliament, but rather an administrative act by the Statute Revision Commission, the result of which was to create an ambiguity between the French and English versions of the legislation. In my view, this further militates in favour of adopting the meaning reflected by the French version of the legislation, which more faithfully reflects Parliament’s intent in enacting the provision in question.
[52]Finally, a review of subsection 9(1) as a whole also leads to the conclusion that the words “in Canada” should be read as modifying the words “any public authority” / “une autorité publique” as opposed to “adopted and used” or “adopté et employé.”
[53]In this regard, it appears that the provisions of subsection 9(1) can be grouped into four categories:
1. Provisions preventing use of a specific mark or symbol: see, by way of example, paragraphs 9(1)(a), (b), (c), (f) [as am. by S.C. 1993, c. 15, s. 58], (g) [as am. idem], (h), (h.1) [as enacted by S.C. 1990, c. 14, s. 8], (j), (k), (l), (m);
2. Provisions that Parliament clearly intended to have apply to foreign entities, such as paragraphs 9(1)(i) [as am. by S.C. 1994, c. 47, s. 191], (i.1) [as enacted by S.C. 1993, c. 15, s. 58; 1994, c. 47, s. 191] and (i.2) [as enacted by S.C. 1993, c. 15, s. 58; c. 44, s. 226], which expressly apply to any “country of the Union”, and paragraph 9(l)(i.3) [as enacted by S.C. 1993, s. 15, s. 58; c. 47, s. 191], which expressly applies to any “interna-tional intergovernmental organization”;
3. Provisions that Parliament intended to have apply only to Canadian entities: for example, subparagraph 9(1)(n)(iii), which expressly applies to a “public authority, in Canada”/“autorité publique au Canada”; subparagraph 9(1)(n)(i), which expressly applies to “Her Majesty’s Forces as defined in the National Defence Act”; paragraph 9(1)(e), which expressly applies to “Canada” or “any province or municipal corporation in Canada”; paragraph 9(1)(o), which expressly applies to the “Royal Canadian Mounted Police”; and paragraph 9(1)(n.1) [as enacted by S.C. 1993, c. 15, s. 58; 1999, c. 31, s. 209(F)]; which expressly applies to “the Governor General”; and
4. Provisions intended to apply to any entity regardless of location: for example, subparagraph 9(1)(n)(ii), which expressly applies to “any university.”
[54]Given this, one would think that if Parliament intended that subparagraph 9(1)(n)(iii) apply to foreign public authorities, the statute would have said so explicitly. At a minimum, one would not expect to see the modifier “in Canada” in the provision.
[55]As a consequence, I am satisfied that, properly interpreted, subparagraph 9(1)(n)(iii) of the Trade‑ marks Act requires that, in order to be entitled to an official mark, the institution claiming the mark must be a public authority in Canada.
[56]In support of its contention that it is entitled to claim the benefit of subparagraph 9(1)(n)(iii) of the Trade‑marks Act, the USPS relies on the decision of this Court in Canada Post Corp. v. Post Office, [2001] 2 F.C. 63 (T.D.), which held that the provision is not restricted to “Canadian public authorities” [at paragraph 44].
[57]It should be noted that this case was decided prior to the delivery of the Federal Court of Appeal’s decision in the Ontario Assn. of Architects case, where the Court held that the extensive powers conferred by subparagraph 9(1)(n)(iii) of the Trade‑marks Act are such that the provision should not be given an expansive meaning.
[58]Moreover, my interpretation of the legislation is not necessarily inconsistent with the finding in the Post Office case cited above. In my view, the legislation requires that to be able to claim the benefit of subparagraph 9(1)(n)(iii), the public authority in question must be a public authority in Canada, whereas the finding in the Post Office case was arguably a little different, namely that the legislation was not limited to Canadian public authorities.
[59]However, to the extent that my interpretation of the legislation may be inconsistent with that in the Post Office case, for the reasons articulated above, I must respectfully decline to follow it.
[60]Before turning to consider whether the USPS is a public authority in Canada, there is one additional argument advanced by the USPS that must be addressed. That is, in support of its contention that it is sufficient for the purposes of subparagraph 9(1)(n)(iii) of the Trade‑marks Act that the public authority in question has adopted and used the marks in issue in Canada, the USPS says that to interpret the legislation otherwise would result in a breach of the “National Treatment” provisions of the Paris Convention for the Protection of Industrial Property, 20 March 1883, as revised.
[61]The relevant portion of Article 2 of the Convention states that:
Article 2
(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.
[62]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.”
[63]Canada ratified the Paris Convention [1934 London Act] on June 26, 1951, and section 2 of the Trade‑marks Act includes the Convention in the definition section of the Act. The Convention has not, however, been implemented into Canadian law: see MacDonald et al. v. Vapour Canada Ltd., [1977] 2 S.C.R. 134, at pages 167‑172. (See also Hughes on Trade Marks, 2nd ed., 2005, at paragraph 5.) Nevertheless, international conventions may be used in interpreting domestic law, even where they have not been formally implemented in this country: Baker v. Canada (Minister of Citizenship and Immigration), [1999] 2 S.C.R. 817.
[64]In this context, the USPS submits that any ambiguity in the Trade‑marks Act must be resolved in favour of an interpretation that would honour Canada’s international obligations: Salomon v. Commissioners of Customs and Excise, [1967] 2 Q.B. 116 (C.A.), at page 143, and National Corn Growers Assn. v. Canada (Import Tribunal), [1990] 2 S.C.R. 1324, at page 1371.
[65]I am of the view that the provisions of the Paris Convention do not assist the USPS. While the term “official mark” is commonly used in a generic sense to refer to the class of marks covered by section 9 of the Trade‑marks Act, the only place that the term “official mark” actually appears in the Act is in subparagraph 9(1)(n)(iii).
[66]As noted earlier, the protections available to public authorities by virtue of subparagraph 9(1)(n)(iii) are a largely Canadian creation. Perhaps for this reason, 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”.
[67]The closest thing to an official mark contemplated by the Paris Convention is the protection afforded by Article 6ter to State emblems, such as armorial bearings and flags, as well as to official hallmarks and emblems of intergovernmental organizations. This is quite different than the type of marks in issue in this case.
[68]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.
[69]This then leaves the question of whether the USPS is a public authority in Canada.
Is the USPS a Public Authority in Canada?
[70]As was noted earlier in this decision, the term “public authority” is not defined in the Trade‑marks Act. Rather, the test for establishing what constitutes a public authority has been established by the jurisprudence.
[71]In the Ontario Assn. of Architects case previously cited, the Federal Court of Appeal articulated a two‑part test to be used in determining whether a party is a “public authority” for the purposes of subparagraph 9(1)(n)(iii) of the Trade‑marks Act. That is, the Court must determine first, whether the entity in question is subject to governmental control, and second, the extent to which the organization’s activities benefit the public (at paragraphs 47‑53).
[72]There is no doubt that the USPS is a public authority in the commonly understood sense of the term, in that it is established by the executive branch of the American government to provide a service to the public. The question is whether it is a “public authority” in Canada for the purposes of subparagraph 9(1)(n)(iii) of the Trade‑marks Act.
[73]That is, this case raises the question of whether the “government control” referred to in the Ontario Assn. of Architects case has to be exercised by a Canadian government, or whether it is sufficient if the entity in question is subject to government control outside of this country.
[74]It does not appear that there is any jurisprudence directly on this point. The only case to which I was referred expressly dealing with a foreign public authority is the Post Office case previously cited. The issue of governmental control was not addressed in that case. However, in Canadian Jewish Congress v. Chosen People Ministries, Inc., the Court was called upon to consider whether an American religious organization was a public authority for the purposes of subparagraph 9(1)(n)(iii) of the Trade‑marks Act. In concluding it was not, the Court was influenced by the fact that the Government of Canada could not intervene in the way that churches conduct their affairs.
[75]In approaching this question, it bears repeating that the Federal Court of Appeal has observed that subparagraph 9(1)(n)(iii) of the Trade‑marks Act confers very substantial benefits that are not available to the owners of trade‑marks. Concomitant with this is the potential for injury to trade‑mark owners and to the public. As a consequence, the Court concluded that the provision should not be given an expansive meaning: Ontario Assn. of Architects, at paragraphs 63‑64.
[76]With this in mind, reference should be had to the comments of Justice Cattanach in Insurance Corporation of British Columbia v. Registrar of Trade Marks, [1980] 1 F.C. 669 (T.D.), where he stated, at page 684 that:
A public authority may embark upon a venture of supplying wares and services to the public and in so doing adopt an official mark. Having done so then all other persons are precluded from using that mark and, as a result of doing so, on its own initiative, the public authority can appropriate unto itself the mark so adopted and used by it without restriction or control other than its own conscience and the ultimate will of the electorate expressed by the method available to it. [Emphasis added.]
[77]Given that the extensive benefits afforded to the holders of official marks exist only within the geographic confines of this country, it follows that any injury that will be suffered by trade‑mark owners and the public will be suffered by Canadian trade‑mark owners and the Canadian public.
[78]In this context, surely the ultimate accountability to the electorate contemplated by Justice Cattanach must be to a Canadian electorate.
[79]As a consequence, I find that in order to satisfy the test established by the Federal Court of Appeal in the Ontario Assn. of Architects case, a public authority must be subject to governmental control within this country. Given that there is no evidence before me that any level of government in Canada exercises any measure of power or control over any aspect of the USPS’s operations, I am satisfied that the USPS is not a public authority for the purposes of subparagraph 9(1)(n)(iii) of the Trade‑marks Act. As a result, it is therefore not entitled to claim the benefit of subparagraph 9(1)(n)(iii) of the Trade‑marks Act.
Conclusion
[80]For these reasons the application is allowed. The decisions of the Registrar to give public notice of the adoption and use of the marks in issue are set aside.
ORDER
THIS COURT:
1. Declares that the USPS is not a “public authority” in Canada for the purposes of subparagraph 9(1)(n)(iii) of the Trade‑marks Act;
2. Declares that the marks:
- “United States Postal Service‑Express Mail”
- “First‑class Mail”
- “Standard A Mail“
- “Standard B Mail”
- “Parcel Select”
- “Priority Mail”
- “Global Priority Mail”
- “Delivery Confirmation”
- “Signature Confirmation”
- “Global Express Guaranteed”
- “Netpost” and
- The USPS “Eagle Design”
are not official marks;
3. Orders that the decisions of the Registrar to give public notice of the adoption and use of the marks:
- “United States Postal Service‑Express Mail”
- “First‑class Mail”
- “Standard A Mail”
- “Standard B Mail”
- “Parcel Select”
- “Priority Mail”
- “Global Priority Mail”
- “Delivery Confirmation”
- “Signature Confirmation”
- “Global Express Guaranteed”
- “Netpost and”
- “The USPS “Eagle Design”
are set aside.
4. Costs were not sought, nor are they ordered.