In a recent decision, the Federal Court 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 it so nearly resembled Consorzio Del Prosciutto Di Parma’s Official Mark for PARMA & Design and therefore was prohibited from adoption pursuant to s. 9 of the Trade-marks Act.
The issue of that was of interest is whether Consorzio Del Prosciutto Di Parma (“Consorzio”) is 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 (as we have reported in a previous post). A public authority must be one that is subject to control by a Canadian government. Thus, since Consorzio is subject to control by the Italian government, it is a foreign public authority and therefore not a “public authority” within the meaning of s. 9 of the Act. The Federal Court held that Consorzio’s Official Mark is invalid and void ab initio. The Court also directed the Registrar of Trade-marks to allow Maple Leaf’s application for PARMA & Design.