Bacardi & Co. Ltd. v. Havana Club Holding S.A., 2003 FC 939

Date: 20030731

Docket: T-465-02

Citation: 2003 FC 939

OTTAWA, ONTARIO, THIS 31^st DAY OF JULY, 2003

Present: THE HONOURABLE MR. JUSTICE LUC MARTINEAU

BETWEEN:

                                                  BACARDI & COMPANY LIMITED

                                                                                                                                                       Applicant

                                                                                 and

                                                    HAVANA CLUB HOLDING S.A.

                                                                                                                                                   Respondent

                                               REASONS FOR ORDER AND ORDER

[1]                 This is an appeal from a decision by the Registrar of Trade-marks (the Registrar) dated January 18, 2002, rejecting the opposition by the applicant, Bacardi & Company Limited, to the application of the respondent, Havana Club Holding S.A., for registration of the mark HAVANA CLUB ANEJO RESERVA & Design (the new mark), based on its proposed use in Canada, in association with rum.

[2]                 In this case, the Registrar concluded at page 8 of his decision:

[TRANSLATION] The first and fourth grounds of opposition, alleging non-use and non-distinctiveness of the applied for mark HAVANA CLUB ANEJO RESERVA & Design, have not been supported by evidence and are therefore rejected. As regards the remaining grounds of opposition, the critical issue is whether this Board has jurisdiction to effectively disregard the trade-marks register without actually amending the register. As I have indicated above, I do not believe that this Board has jurisdiction to do so. Accordingly, the second and third grounds of opposition are rejected.

[3]                 This case is basically identical to another appeal that was heard at the same time, on May 26, 2003, and which was dismissed by this Court (Bacardi & Company Limited v. Havana Club Holding S.A., 2003 FC 938, July 31^st, 2003). That case was an appeal from a decision of the Registrar dated May 3, 2001, regarding an opposition between the same parties to the registration of the mark HAVANA CLUB Design (Application No. 843,949). The submissions, the evidence, the issues and the legal arguments are essentially the same in both cases with one exception: as the first ground of opposition, the applicant contended here that the requirements of paragraph 30(e) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) have not been complied with because the respondent does not intend to use the new mark in Canada, in connection with rum. Nonetheless, I note that on this appeal the applicant is not challenging the validity of the Registrar's decision to reject the first ground of opposition. Accordingly, the reasoning and the reasons for the preceding decision of this Court dismissing the first appeal also apply to this case.                                                                             

[4]                 Therefore, upon reviewing the evidence, the Registrar could reasonably conclude that the respondent's application conformed to the requirements of the Act, that the new mark was registrable, that the respondent was the person entitled to registration of the mark and that the new mark was distinctive. In addition, the Registrar's decision to reject the applicant's opposition is not, in my view, unreasonable nor wrong in law.

                                                  ORDER

THE COURT ORDERS that the appeal filed by the applicant from the decision of the Registrar dated January 18, 2002, rejecting the applicant's opposition to the registration of the mark HAVANA CLUB ANEJO RESERVA & Design (Application No. 871,954), is dismissed with costs.

                                           __________________________________

                                                                                                           Judge                                

Certified true translation

Mary Jo Egan, LLB

                                       FEDERAL COURT

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                   T-465-02

STYLE OF CAUSE:                                         BICARDI & CO. LTD. v. HAVANA CLUB HOLDING S.A.

PLACE OF HEARING:                                   OTTAWA, ONTARIO

DATE OF HEARING:                                     MAY 26, 2003

REASONS FOR ORDER

AND ORDER:          THE HONOURABLE MR. JUSTICE MARTINEAU

DATED:                      JULY 31, 2003

APPEARANCES:     

MR. ROBERT MacDONALD                                              

MS. MONIQUE COUTURE                                        FOR THE APPLICANT

MR. BARRY GAMACHE                                               FOR THE RESPONDENT

SOLICITORS OF RECORD:                       

GOWLING, LAFLEUR, HENDERSON          FOR THE APPLICANT

OTTAWA, ONTARIO

MORRIS ROSENBERG                                                 FOR THE RESPONDENT

DEPUTY ATTORNEY GENERAL OF CANADA