Federal Court Decisions

 Date: 20120412

Docket: T-253-11

Citation: 2012 FC 416

Ottawa, Ontario, April 12, 2012

PRESENT:     The Honourable Mr. Justice O'Keefe

 

 

BETWEEN:

	MAPLE LEAF FOODS INC.
		Applicant
	and
	CONSORZIO DEL PROSCIUTTO DI PARMA
		Respondent

 

           REASONS FOR JUDGMENT AND JUDGMENT

 

[1]               This is an application under section 56 of the Trade-Marks Act, RSC 1985, c T-13 (the Act) of an appeal of the decision of the Canadian Intellectual Property Office Registrar of Trade-marks (the Registrar) dated December 16, 2010, refusing the applicant’s application to register the trade-mark PARMA & Design (Application No. 765,376) in light of the respondent’s existing official mark PARMA & Design (Application No. 908,349).

 

[2]               The applicant requests:

            1.         That the Registrar’s decision be set aside;

            2.         That the Registrar be directed to allow Application No. 765,376; and

            3.         A declaration that the respondent is not a “public  authority” within the meaning of subparagraph 9(1)(n)(iii) of the Act, rendering the Official Mark 908,349 invalid, ineffective and void ab initio.

 

 Background

 

[3]               The applicant owns TMA 179,637 for the word PARMA. The applicant, including its predecessors-in-title, has used the mark PARMA in Canada since at least 1958.

 

[4]               On October 3, 1994, the applicant filed an application for the registration of trade-mark PARMA & Design (Application No. 765,376) for the wares “meats, namely salami, capicollo, pepper butts, pepperoni, dry sausage, mortadella, ham”.

 

[5]               On September 19, 1997, the respondent applied for public notice of the adoption and use of the PARMA & Design trade-mark as an official mark for services pursuant to subparagraph 9(1)(n)(iii) of the Act (Application No. 908,349). The Registrar granted the requested public notice on February 11, 1998 by publishing a notice in the Trade-marks Journal.

 

[6]               An objection to the applicant’s trade-mark was raised since it was considered to be a mark prohibited from adoption under subparagraph 9(1)(n)(iii) of the Act. As the applicant’s trade-mark so nearly resembled the mark PARMA & Design (Application No. 908,349), the Registrar found that it did not appear to be registrable.

Registrar’s Decision

 

[7]               On December 16, 2010, the Registrar issued its decision refusing the registration of the applicant’s trade-mark application.

 

[8]               The Registrar noted that the test for resemblance with respect to official marks must have regard to imperfect recollection and must determine whether a mark so nearly resembles a section 9 prohibited mark so as to be likely mistaken therefore. The Registrar explained that the test requires consideration of more circumstances than the “straight comparison” test and consideration can be given to the degree of resemblance in appearance or sound or in the idea suggested. However, this test does not allow for consideration of all the circumstances under subsection 6(5) of the Act. As such, the nature of the wares and/or services is not a relevant circumstance for the purposes of confusion between an official mark and a regular mark.

 

[9]               The Registrar therefore determined that the applicant’s trade-mark was not registrable in view of paragraph 12(1)(e) of the Act. As such, the application was refused pursuant to paragraph 37(1)(b) of the Act.

 

Issues

 

[10]           The applicant submits the following point at issue:

            Whether the respondent’s official mark is invalid because the respondent is not a “public authority” (not being under the control of any Canadian government) and thus, that this official mark has improperly stood in the way of the applicant’s trade-mark application.

 

[11]           I would rephrase the issues as follows:

            1.         What is the appropriate standard of review?

            2.         Did the Registrar err in granting public notice of the adoption and use of the official mark by the respondent?

 

Applicant’s Written Submissions

 

[12]           The applicant submits that the respondent has not been, at all material times, a “public authority” within the meaning of subparagraph 9(1)(n)(iii) of the Act. The respondent has never been subject to control exercised by a Canadian government which is a necessary requirement to possess a valid official mark.

 

[13]           The applicant submits that the Registrar’s reliance on an invalid official mark to deny its application for registration is an error of law.

 

[14]           The applicant cites United States Postal Service v Canada Post Corporation, 2007 FCA 10, [2007] FCJ No 25, in support of its submission that it is a condition precedent to the “public authority” status under subparagraph 9(1)(n)(iii) of the Act that the official mark applicant be subject to control by a Canadian government. The applicant submits that the respondent has indicated on numerous occasions that it is subject to significant control by the Italian government, not a Canadian government. For example:

            1.         In the application to have its official mark advertised, the respondent advised the Registrar that it was subject to significant degree of control by the Italian government;

            2.         In Maple Leaf Meats Inc v Di Parma, 197 FTR 272, [2000] FCJ No 1962, the respondent confirmed in its memorandum of fact and law that it was controlled by Italian authorities; and

            3.         In Consorzio del Prosciutto di Parma v Maple Leaf Meats Inc (TD), [2001] 2 FC 536, [2001] FCJ No 89, the respondent submitted evidence of the nature and degree of control exercised by the Italian government over its activities.

 

[15]           The applicant submits that there is no evidence before this Court that any level of government in Canada exercises any measure of power or control over any aspect of the respondent’s operations. Conversely, the respondent’s evidence and representations filed with the Registrar and in prior Court proceedings indicates that it is only controlled by Italian authorities. The respondent is therefore not a “public authority”.

 

[16]           The applicant cites extensive jurisprudence which it submits provides that when an official mark is advertised in favour of an applicant who is not a public authority, the Federal Court has the jurisdiction to declare the advertised mark invalid and ineffective at law.

 

[17]           The applicant also submits that in the related case of Maple Leaf Foods Inc v Consorzio Del Prosciutto Di Parma, 2010 FCA 247, [2010] FCJ No 1205, the Federal Court of Appeal expressly authorized the applicant to challenge the validity of the respondent’s official mark (at paragraph 2).

 

[18]           As such, the applicant submits that the respondent’s disputed official mark should be declared invalid and ineffective in giving rise to any rights or prohibitions under the Act. The Registrar should therefore be directed to allow the applicant’s application.

 

Respondent’s Written Submissions

 

[19]           On May 17, 2011, the respondent notified the Court that it would not be participating further in these proceedings, except to address the Court on the matter of costs at the conclusion of the hearing.

 

Analysis and Decision

 

[20]           Issue 1

            What is the appropriate standard of review?

            Where previous jurisprudence has determined the standard of review applicable to a particular issue before the court, the reviewing court may adopt that standard (see Dunsmuir v New Brunswick, 2008 SCC 9, [2008] 1 SCR 190 at paragraph 57).

 

[21]           It is well established that the appropriate standard of review of an appeal made under section 56 of the Act depends on whether or not new evidence has been filed that would materially affected the Registrar’s findings or its exercise of discretion. Where no such evidence has been filed, the standard of review is reasonableness (see Brovillette Kosie Prince v Orange Cove-Sanger Citrus Association, 2007 FC 1229, [2007] FCJ No 1697 at paragraph 9; and Ontario Assn of Architects v Assn of Architectural Technologists of Ontario, 2002 FCA 218, [2002] FCJ No 813 at paragraph 28).

 

[22]           In reviewing the Registrar’s decision on a standard of reasonableness, the Court should not intervene unless the Registrar came to a conclusion that is not transparent, justifiable and intelligible and within the range of acceptable outcomes based on the evidence before it (see Dunsmuir above, at paragraph 47; and Canada (Citizenship and Immigration) v Khosa, 2009 SCC 12, [2009] SCJ No 12 at paragraph 59). It is not up to a reviewing court to substitute its own view of a preferable outcome, nor is it the function of the reviewing court to reweigh the evidence (see Khosa above, at paragraphs 59 and 61).

 

[23]           Issue 2

            Did the Registrar err in granting public notice of the adoption and use of the official mark by the respondent?

            This issue stems from the wording of subparagraph 9(1)(n)(iii) of the Act, which states:

 

[24]           The confusion arises from the wording “any public authority, in Canada”. At first glance, it would appear that the scope of this provision might include any public authority, regardless of country, that uses an official mark in Canada. This led to conflicting jurisprudence on whether “public authority” is restricted to Canadian public authorities (see See You In - Canadian Athletes Fund Corporation v Canadian Olympic Committee, 2007 FC 406, [2007] FCJ No 541 at paragraph 58).

 

[25]           However, the Federal Court of Appeal recently clarified the scope of this provision in United States Postal Service above, at paragraph 1:

[…] to be a "public authority" within the meaning of subparagraph 9(l)(n)(iii) of the Trade-Marks Act, R.S.C. 1985, C. T-13, an entity must be subject to government control and must engage in activities that benefit the public. In our view, to fulfil the intention of Parliament, the government exercising the control must be a Canadian government. […] [emphasis added]

 

 

[26]           As such, it is now clear that “public authority” does not broadly refer to a public authority controlled by any country worldwide. Rather, it is limited to public authorities controlled by a Canadian government.

 

[27]           As submitted by the applicant and uncontested by the respondent, there is no evidence that the respondent is subject to control by the Canadian government. Conversely, there is a dearth of evidence that it is subject to control by the Italian government. I therefore find that the Registrar erred in granting public notice of the adoption and use of the official mark by the respondent.

 

[28]           As a result, the appeal must be allowed and an order will issue:

1.         Setting aside the Registrar’s decision and directing the Registrar of Trade-marks to allow Maple Leaf’s trade-mark application;

2.         Declaring the disputed official mark to be ineffective to give rise to any rights or prohibitions under the Trade-marks Act and without any legal effect;

3.         Declaring that Consorzio del Prosciutto di Parma is not a “public authority” within the meaning of subparagraph 9(1)(n)(iii) of the Trade-marks Act; and

4.         Declaring the disputed official mark to be invalid and void ab initio.

 

[29]           The parties made submissions as to costs and both agreed that usually no costs are awarded in cases such as this. I would note that in this case, the respondent did not make submissions on the merits of the appeal but did not consent to the granting of the appeal. Based on the facts of this case, I will allow the applicant its disbursements only; the amount of the disbursements to be determined by the assessment officer if the parties do not agree on the amount of the disbursements.

JUDGMENT

THIS COURT’S JUDGMENT is that:

1.         The Registrar’s decision is set aside and the Registrar of Trade-marks is directed to allow Maple Leaf’s trade-mark application;

2.         The disputed official mark is declared to be ineffective to give rise to any rights or prohibitions under the Trade-marks Act and without any legal effect;

3.         Consorzio del Prosciutto di Parma is declared to not be a “public authority” within the meaning of subparagraph 9(1)(n)(iii) of the Trade-marks Act;

4.         The disputed official mark is invalid and void ab initio; and

5.         The applicant is allowed its disbursements only; the amount of such disbursements to be set by the assessment officer if the parties do not agree on the amount of the disbursements.

 

 

 

“John A. O’Keefe”

 

 

ANNEX

 

Relevant Statutory Provisions

 

Trade-Marks Act, RSC 1985, c T-13

 

 

Federal Courts Act, RSC, 1985, c F-7

 

 

 

Federal Courts Rules, SOR/98-106

 

 

FEDERAL COURT

 

SOLICITORS OF RECORD

 

 

DOCKET:                                          T-253-11

 

STYLE OF CAUSE:                          MAPLE LEAF FOODS INC.

 

                                                            - and -

 

                                                            CONSORZIO DEL PROSCIUTTO DI PARMA

 

PLACE OF HEARING:                    Toronto, Ontario

 

DATE OF HEARING:                      January 19, 2012

 

REASONS FOR JUDGMENT

AND JUDGMENT OF:                    O’KEEFE J.

 

DATED:                                             April 12, 2012

 

 

 

APPEARANCES:

 

Kevin Sartorio	FOR THE APPLICANT
Daniel Glover	FOR THE RESPONDENT

 

SOLICITORS OF RECORD:

 

Gowling Lafleur Henderson LLP Toronto, Ontario	FOR THE APPLICANT
McCarthy Tétrault LLP Toronto, Ontario	FOR THE RESPONDENT