Official Marks in Canada – Foreign public authorities need not apply


In a recent decision, the Federal Court of Canada (Trial Division) has ruled in favour of Maple Leaf Foods Inc. (“Maple Leaf”) in an appeal of the decision of the Registrar of Trade-marks refusing Maple Leaf’s application to register the trade-mark PARMA & Design.  The Registrar had refused the application on the basis that the mark so nearly resembled as to be mistaken for Consorzio Del Prosciutto Di Parma’s Official Mark for PARMA & Design and therefore was prohibited from registration pursuant to s. 9 of the Trade-marks Act

The issue that was of particular interest was whether Consorzio Del Prosciutto Di Parma (“Consorzio”) was a “public authority” within the meaning of s. 9 of the Act.  The Court applied the test for a public authority, as clarified by the Federal Court of Appeal in United States Postal Service v. Canada Post Corporation, 2007 FCA 10 (reported in a previous post).  In that case, the Court of Appeal held that for the purpose of Section 9, a public authority must be one that is subject to control by a Canadian government.  

In the case involving Parma & Design, because Consorzio was subject to control by the Italian and not a Canadian government, it was a foreign public authority and therefore not a “public authority” within the meaning of s. 9 of the Act.  As a result, the Court held that Consorzio’s Official Mark was invalid and void ab initio.  The Court of Appeal therefore directed the Registrar of Trade-marks to allow Maple Leaf’s application for PARMA & Design.