Return to Sender


I’ve been reading case law recently. I don’t know what’s the matter with me; the phase will pass. I mean, it is not anyone’s idea of appropriate summer reading. But while I’m in this mood…

A couple of years ago or more the United States Postal Service caused our Registrar of of Trade‑marks to give public notice of the their adoption and use of 13 official marks, pursuant to s.9 (1) (n) (iii) of the Trade‑marks Act, to wit: “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.”

The critical portion of s.9 (1) (n) (iii) reads as follows:

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…
any… mark…
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 Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;

In a suit by Canada Post, the trial court decided that the USPS was not a “public authority” for the purposes of this act, and the Federal Court of Appeal confirmed that decision earlier this year.

What interests me, apart from the over-reaching of the USPS, is that one of the ways the court resolved the issue was by examining both the French and English versions of the legislation, something, I suspect, not all lawyers routinely do.

Notice that in the English version there is a (curious, to me) comma: “used by any public authority, in Canada as an official mark.” According to the trial judge this introduces some ambiguity as to what “in Canada” refers to or modifies. But the comma-less French version of the same passage reads, “adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou services,” making it more clear that the public authority must be a Canadian one.

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