Date: 19991230
Docket: T-2601-97
IN THE MATTER of Sections 38, 56 and 59 of the Trade-Marks Act, 1993, Ch. 15
| AND IN THE MATTER of an Appeal from the Decision Issued by the Registrar of Trade-Marks in an Opposition Against Application No. 573,206 for the trade-mark MARIO VALENTINO |
Docket: T-2602-97
IN THE MATTER of Sections 38, 56 and 59 of the Trade-Marks Act, 1993, Ch. 15
| AND IN THE MATTER of an Appeal from the Decision Issued by the Registrar of Trade-Marks in an Opposition Against Application No. 573,865 for the trade-mark MARIO VALENTINO |
Docket: T-2603-97
IN THE MATTER of Sections 38, 56 and 59 of the Trade-Marks Act, 1993, Ch. 15
AND IN THE MATTER of an Appeal from the Decision Issued by the Registrar of Trade-Marks in an Opposition Against Application No. 596,311 for the trade-mark MARIO VALENTINO
REASONS FOR ORDER
CAMPBELL J.
A.Background
[1] This is an appeal by Mario Valentino S.p.A. from the 30 September 1997 decision of the Registrar of Trade-marks ("the Registrar"), acting under the Trade-marks Act (R.S.C. 1985, T-13) ("the Act"), refusing registration of the trade-marks cited in applications 573,206, 573,865, and 596,311, filed by Mario Valentino S.p.A.
[2] The parties involved in this case, Mario Valentino S.p.A. ("the Applicant") and Valint N.V. ("the Opponent") have their origins in Italy, and were both founded by persons who have achieved designer reputations: Mario Valentino and Valentino Garavani respectively.
[3] Both the Applicant and the Opponent design and manufacture high end consumer goods: the Applicant specializing in leather footwear, leather garments, garments of other materials, and fashion accessories marketed primarily under the trade-mark MARIO VALENTINO; the Opponent specializing in garments for women, accessories including shoes, handbags, scarves, eyeglasses and perfume, and menswear including suits, jackets, trousers, and ties primarily marketed under the trade name VALENTINO. Both the Applicant and Opponent distribute internationally.
[4] In 1979, as a result of "various legal and administrative controversies" that had arisen in several countries regarding their respective trade-marks, the predecessors to the parties in the present case entered into a co-existence agreement ("the Agreement") 1. The stated intent of the Agreement was that:
| [t]he parties desire to avoid public confusion and conflict, present or future, in any part of the world and together to amicably put an end to all controversy which has arisen between them. 2 |
[5] In paragraphs 1 through 9, the Agreement delineates certain areas of the fashion trade that would be regarded as the exclusive realm of each company for trade-mark purposes.
[6] In paragraphs 7(b)(v) and 7(c)(v), the Agreement states that each of the parties to the Agreement:
| ...shall not object, contest or interfere, either directly or indirectly, with the use, registration, renewal, or re-registration by the [other party] of any of the trademarks which they have the right to hold in accordance with this agreement. 3 |
[7] Paragraph 22 of the Agreement states that any controversy regarding the:
| ...interpretation, application or performance of the present agreement, as well as any dispute with regard to technical problems, or any requirement of supplementation, even future, of the agreement shall be settled in equity by two amicable arbitrators who may act, as the case may be, as formal or informal arbitrators, and whom the parties forthwith designate in the persons of Prof. Adv. Remo Franceschelli and Prof. Adv. Agostino Gambino, who shall decide any controversy. 4 |
[8] There has been a breakdown in the relationship between the parties in the present case resulting in arbitration proceedings in Italy. This breakdown has resulted in the Opponent"s opposition to the Applicant"s applications herein.
[9] On 20 November 1986, 2 December 1986, and 30 November 1987 respectively, the Applicant filed the following applications for consideration by the Registrar: application 573,206 for registration of the trade-mark MARIO VALENTINO in Canada in association with personal accessories 5; application 573,865 for registration of the trade-mark MARIO VALENTINO in Canada in association with outer clothing 6; and application 596,311 for registration of the trade-mark MARIO VALENTINO in Canada in association with jewellery, and watches and clocks 7.
[10] The Opponent filed similar Statements of Opposition on November 2, 1990 with respect to each of the three applications 8, and by counterstatement dated 21 May 1991, the Applicant denied all allegations set forth in the Statement of Opposition. Both parties filed affidavit evidence and written arguments and an oral hearing was conducted before the Registrar ("the Registrar") at which both parties were represented. On 30 September 1997, the Registrar rendered a decision refusing the Applicant"s application for registration of the trade-mark MARIO VALENTINO in relation to the goods in question.
B. The decision of the Registrar
[11] The Registrar decided both for and against the Applicant. The Opponent did not cross appeal the findings made against it; consequently, the only findings in the decision that are the subject matter of the present appeal are the Registrar"s findings with respect to the Agreement, s.12(1)(a), and s.12(1)(d) of the Act .
1. The Agreement
[12] The Registrar questioned the relevance of the Agreement with respect to resolving possible confusion between the Applicant"s and Opponent"s trade-marks. In addition, he stated that "an agreement may indicate the intentions of competing parties, but it has no regard for the potential for confusion in the marketplace" 9 and, as a result, chose to give little weight to the Applicant"s arguments respecting the enforcement of the Agreement.
2. Section 12(1)(a)
[13] Section 12(1)(a) of the Act states that:
| 12(1) Subject to s. 13, a trade-mark is registrable if it is not |
| (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years; |
[14] Pursuant to this provision, the Registrar found the Applicant"s proposed trade-mark MARIO VALENTINO to be unregistrable. In coming to this conclusion, the Registrar stated that he was guided by the decision in Gerhard Horn Investments Ltd. v. Registrar of Trade Marks 10 where Cattanach J. at 30 said:
| The first and foremost consideration is whether the word or words sought to be registered is the name or surname of a living individual or an individual who has recently died. |
| It is when that condition precedent is satisfied, and only then, that consideration need be given to the question whether the trade-mark applied for is "primarily merely" a name or surname rather than something else . 11 [Emphasis added] |
[15] On this basis, the Registrar made the following finding:
| The applicant acknowledges that Mario Valentino was a living person. I am satisfied by this, and by the evidence filed by the opponent, that the trade-mark MARIO VALENTINO is the name of an individual who is living or has died within the past thirty years. Since there is no other likely connotation for these words, and nothing was filed which would suggest an alternative meaning, it appears that the average consumer would view the mark as being primarily merely the surname of an individual who is living or has died in the past thirty years. The onus is on the applicant to show otherwise and they have failed to do so. 12 |
[16] In addition, the Registrar found that:
| ...although the applicant has stated that it is common for fashion designers to use their names as trade-marks, it cannot be suggested that such designers" names are prima facie registrable as trade-marks. 13 |
[17] Finally, the Registrar stated:
| I do not believe, as the applicant does, that an individual"s name can become registrable merely on the basis that it can function as a trade-mark. 14 |
[18] Thus, having accepted that MARIO VALENTINO was primarily merely the name of the deceased fashion designer, the Registrar was unable to reach the conclusion that there was sufficient evidence to demonstrate that the words had become "something else" in the words of Cattanach J.
[19] Further, the Registrar did not find that the proposed marks had become sufficiently "distinctive" so as to fall within the s.12(2) exception to the s.12(1)(a) bar to registration. 15 Citing the Federal Court of Appeal decision in W.R. Grace & Co. v. Union Carbide Corp. 16, the Registrar said, "I do not find the applicant"s evidence persuasive in view of the heavy onus resting on a party relying on s.12(2) for the registration of an otherwise unregistrable mark". 17
3. Section 12(1)(d)
[20] Section 12(1)(d) of the Act states that
| 12(1) Subject to s.13, a trade-mark is registrable if it is not... |
| (d) confusing with a registered trade-mark; |
[21] In finding on the issue of whether confusion exists in relation to the proposed mark MARIO VALENTINO, the Registrar concluded as follows:
| The legal burden is on the applicant to show that there is no reasonable likelihood of confusion. In addition, the issue must be considered as a matter of first impression and imperfect recollection. The applicant"s marks are not highly distinctive. I also find that the applicant"s marks are very close in appearance, sound and in the ideas suggested to the opponent"s marks. This, combined with the fact that the case law indicates that toiletries, jewelry [sic] and the other wares of the applicant are all related to the opponent"s wares, leads me to conclude that an average purchaser, as a matter of first impression and imperfect recollection, would be confused by the use of the applicant"s and opponent"s trade-marks in the same area. I find that the use of the applicant"s mark MARIO VALENTINO in the same area as the opponent"s registered trade-marks would be likely to lead to the inference that the applicant"s wares are manufactured or sold by the opponent. 18 |
[22] To arrive at this conclusion, the Registrar applied the provisions of s.6 of the Act as follows: 19
a. s.6(5)(a): distinctiveness
[23] The Registrar quoted from the Federal Court of Appeal decision in Re Andres Wines Ltd. and E. & J. Gallo Winery 20 for the proposition that "a trade-mark cannot be considered to be distinctive if the mark, or one confusing with it, is already known in Canada as the mark of another". 21 Based on his previous finding that the proposed trade-marks of the Applicant would be confusing with those of the Opponent, the Registrar found that the Applicant"s proposed marks were not distinctive, and, thus, not registrable.
b. s.6(5)(b): length of time in use
[24] The Registrar held that the affidavit evidence of the Applicant tended to support the claimed use of the mark MARIO VALENTINO in Canada at least since 1984 in relation to clothing and bags.22
c. s.6(5)(c): the nature of the wares, services or business
[25] The Registrar held that the nature of the Applicant"s and Opponent"s wares is related and that, in accordance with the decision of Cullen J. in S.C. Johnson & Sons, Inc. v. Espirit [sic] de Corp. 23, designer marks are to be given a wide ambit of protection.
[26] In addition, the Registrar noted that prior cases have found that designer clothing and toiletries, and men"s clothing and jewellery, are related within the fashion industry. 24 As a result, the Registrar decided that the protection given to the Opponent"s trade-marks should extend beyond its current ambit to include wares similar to those applied for by the Applicants.
d. s.6(5)(d): the nature of the trade
[27] With respect to this factor, the Registrar commented that, given the similarities in the Applicant"s and Opponent"s involvement in the high fashion industry, there was a self-evident common use of the channels of trade. 25
| e. s.6(5)(e): the degree of resemblance between the trade-marks or trade names in appearance or sound or in the ideas suggested by them |
[28] The Registrar found that "there is a great deal of visual resemblance between the marks of the parties, and a strong degree of phonetic resemblance". 26
C. Issues and analysis
[29] The following three issues arise from the Registrar"s decision:
| (1) Regarding the Agreement: |
| Is the Agreement properly before the Court, and if so, what effect should it have? |
| (2) Regarding s.12(1)(a): |
| Did the Registrar err in holding that the proposed trademark "MARIO VALENTINO" was not registrable as primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years? |
| (3) Regarding s.12(1)(d): |
| Did the Registrar err in holding that the proposed trademark "MARIO VALENTINO" was confusing with other existing marks and therefore unregistrable? |
[30] The test in this appeal is that stated by Pratte J.A. in Beverley Bedding and Upholstery Co. v. Regal Bedding and Upholstering Ltd. as being "whether the Registrar has gone wrong". 27 The Applicant argues that on each of the cited issues, the Registrar should have come to a different conclusion, and in addition, has filed new evidence intended to bolster the position it took before the Registrar on each issue.
[31] It is not contested that I should consider where the Registrar has gone wrong by first concluding whether the Registrar made an error in fact or law on the evidence tendered in the opposition proceeding, and second, if no error is found, whether the new evidence produced in the present appeal calls for a different result.
1. Regarding the Agreement
[32] Because failure to prove the Agreement was a ground upon which the Registrar refused its enforcement, on the present appeal, without objection by the Opponent, the Applicant properly proved the agreement through the filing of an affidavit of a translator. 28
[33] On the basis of this "new" evidence, the Applicant argued that the Opponent is estopped from opposing the Applicant"s applications for registration. Despite a specific request to do so during the course of the hearing of this appeal, counsel for the Applicant did not produce any authority to support the proposition that equitable remedies are available for use, either in opposition proceedings, or on an appeal such as the one in the present case. Accordingly, from the bench, I dismissed this argument.
[34] I agree with the Registrar"s decision not to enforce the Agreement. The oppositions filed by the Opponent may, in fact, be contrary to the terms of the Agreement, but the Act does not provide a forum in which to compel the enforcement of such terms. The Act does not endow the Registrar with the kind of regulatory provisions such as may be found in labour relations statutes. There, parties may seek enforcement of contractual arrangements found in collective agreements from an administrative body such as a labour board; here a more appropriate remedy may be obtained through the pursuit of damages in a civil suit as a result of any proven breach of the Agreement.
[35] Thus I find that, while the Agreement was properly before me in the present application, it should be given no effect.
2. Regarding s.12(1)(a)
[36] The Applicant admitted, and the Registrar accepted, that Mario Valentino was the name of the now deceased designer, and thus met the first test set out in Gerhard Horn Investments Ltd. being the name of someone alive, or having died within the previous thirty years.
[37] Based on the admission, the Registrar found that the proposed mark MARIO VALENTINO could not be registered under s.12(1)(a), and rejected the notion that, because other designers had registered their names, this created any assumption that designer"s names were somehow registrable as trade-marks in and of themselves.
[38] I find no error in the Registrar"s analysis on this issue.
[39] While further examples of fashion designers in Canada using their names as trade-marks were entered as evidence on the present appeal, I find that this evidence does not change the fact that the Registrar heard, considered, and, in my opinion, properly rejected the Applicant"s argument on this issue.
3. Regarding s.12(1)(d)
[40] The Applicant"s main argument with respect to the issue of confusion is that the Registrar made an error in applying the test for confusion as that being in the mind of the "average purchaser".
[41] New affidavit evidence was tendered by the Applicant on the present appeal to prove that the Applicant"s wares are expensive, "high end" fashion goods, the purchasers of which are "wealthy", "sophisticated", and "knowledgeable" people; that is, the subject matter of the Applicant"s applications will be sold in a channel of the market where no confusion can arise. 29
[42] In challenging the Registrar"s finding that the purchaser to be considered in determining confusion is the "average purchaser", the Applicant argued that, based on the new evidence, the purchaser that should be considered is rather, what I would term, the "average wealthy" person, and that, "given the nature of the respective wares, they are more likely to be carefully scrutinized by prospective purchasers than would be the case with less expensive goods". 30 Reliance for this argument was placed on General Motors Corp. v. Bellows 31 ("Bellows") and Ciba-Geigy Canada Ltd. v. Apotex Inc. 32 ("Ciba-Geigy").
[43] I have the following significant concerns about the argument advanced.
[44] First, there is no proof that all of the sales of the wares cited in the Applicant"s applications will occur within the suggested "high end" niche of the marketplace. It may very well be that the broad range of items described in the three applications will not be sold in such a way. Without such proof, the Applicant"s argument has no weight.
[45] Second, the Applicant argues that support for the affidavit evidence submitted to prove a "high end" niche, wherein unusually discerning buying takes place by wealthy purchasers, is found in obiter comments in Bellows and Ciba-Geigy. In my opinion, neither case should be applied as precedent.
[46] The fifty-year-old Bellows decision considered the question as to whether there was likely to be confusion in relation to trade-marks between the names "Frozenaire" and "Frigidaire" for refrigerators. Rand J. at 692 commented as follows:
| But in determining that we must take into account the entire circumstances of the trade, including the prices, the class of people purchasing, and the ordinary manner in which they do that. As Cameron J. has pointed out, prospective purchasers deliberate before buying this somewhat high class apparatus; refrigerators are not hurriedly picked off a shelf; they represent a substantial purchase and to each transaction some degree of attention and consideration are given. [Emphasis added] |
[47] The Applicant argues that Rand J."s view is supported by Gonthier J. in Ciba-Geigy , where at 137-138 he said:
| The average customer will not be the same for different products, however, and will not have the same attitude at the time of purchase. Moreover, the attention and care taken by the same person may vary depending on the product he [sic] is buying: someone will probably not exercise the same care in selecting goods from a supermarket shelf and in choosing a luxury item. In the first case, the misrepresentation is likely to "catch" more readily. [Emphasis added] |
[48] It might very well be that, in the experience of those that swore affidavits, persons with whom they deal take care in shopping. However, I reject the notion that this only occurs with the purchase of "high end" goods.
[49] Undoubtedly, seniors, social assistance recipients, single parents, teens, and many others with limited income, take great care in deciding upon the purchases they make. On this basis, the notion of considering the "class" of the person purchasing as an indicator of care likely to be taken as suggested by Rand J. in Bellows , is not only repugnant in the present day social context, but, in my opinion, is unsupportable by what happens according to my perspective of the real world.
[50] In addition, with respect, Gonthier J."s observation is not only not evidence to be considered in the present case, but also, in my opinion, it can be easily refuted. The high degree of competition in supermarkets, where the purchasing of common everyday necessities occurs, is some proof that people care very much about the price and quality of what they buy at the "low end".
[51] In my opinion, there is a high degree of risk of reaching the wrong factual conclusion by relying on the affidavit and obiter opinions tendered by the Applicant on the confusion issue. The risk of error in determining confusion is lessened by applying the disciplined analytical approach adopted by the Registrar who concluded that, given the mark MARIO VALENTINO is not distinctive, and "the great deal of resemblance between the marks of the parties, and a strong degree of phonetic resemblance", confusion will arise in the mind of the "average" purchaser, whomever he or she is, and from whatever walk of life.
[52] Therefore, I find no error in the Registrar"s analysis on this issue, and I dismiss the Applicant"s new evidence argument on the issue of confusion.
D. Conclusion
[53] I find that, even taking into consideration the new evidence filed, the Registrar did not go wrong in reaching the decision respecting each of the applications under appeal.
[54] Accordingly, each appeal herein is dismissed, and I award costs in each to the Opponent.
Judge
OTTAWA
[55]
__________________
1 Filed as Exhibits A and B to the Affidavit of Francesca Moscone, Applicant"s Record, vol. 5, at p.1071 and p.1092.
2 Ibid at p.1097.
3 Ibid at pp.1100 and 1101.
4 Ibid at p.1104.
5 The application is for: (1) Pens, lighters; goods made of leather or imitation therefore, namely luggage, handbags, travelling bags, various kinds of cases made of leather or imitation leather namely cosmetic cases, suitcases, briefcases, key cases, pouches, wallets, purses; (2) Razors and their parts and spare parts; manicure sets; pens, fountain-pens and ball-point pens, and their parts, spare parts, and refills, thereof; shaving brushes and toothbrushes, their parts, and spare parts; lighters, lighter cases and cigarette- and cigar-holders; parts, spare parts and accessories of the aforesaid goods; (3) Goods made of leather and imitation thereof, namely luggage, handbags, travelling bags, various kinds of cases made of leather or imitation leather namely cosmetic cases, suitcases, briefcases, keycases, pouches, wallets, purses; (4) Belts.
The trade-mark was filed based on use and registration in Italy for wares marked (1); proposed use for wares marked (2); use in Canada since at least as early as 1967 for wares marked (3) and use in Canada since at least as early as 1968 for wares marked (4). The mark was advertised in the Trade-marks Journal for the purposes of opposition on 6 June 1990.
6 The application is for: articles of outer clothing for women and men, namely jackets, coats, sports jackets, skirts, blouses, waistcoats, dresses, overcoats, tops, trousers, raincoats, shirts, bush jackets. The application before the registrar requested registration in relation to a number of cosmetic items, but this element of the application was abandoned during the oral hearing of the present case. Thus, the articles just noted are all that remain, and they are now to be considered filed based on use in Canada since at least as early as 1972. The mark was advertised in the Trade-marks Journal for the purposes of opposition on 8 June 1990.
7 The application is for: (1) Jewellery; (2) Jewellery, watches and clocks. The trade-mark was filed based on use and registration in Italy for wares marked (1); proposed use in Canada for wares marked (2). The mark was advertised in the Trade-marks Journal for purposes of opposition on 28 August 1990.
8 The Statements of Oppostion were filed on 2 November 1990, and amended statements on 6 November 1990, and cited the following grounds for opposition to the registrations:
(a) the Applicant"s trade-mark MARIO VALENTINO is not registerable because it is confusing with the registered trade-mark VALENTINO the subject of the following Canadian trade-mark registrations: 141,870, 141,851, 239,921; and 295,617;
(b) the Applicant is not the person entitled to registration because the Applicant"s mark MARIO VALENTINO is confusing with the trade-mark VALENTINO which had been previously used in Canada by the Opponent and its predecessors-in-title in respect of articles of clothing and accessories including jewellery and cosmetics;
(c) the Applicant"s applications do not comply with Section 30 of the Trade-marks Act because the Applicant had not used the trade-mark MARIO VALENTINO as alleged in its application and did not intend to use said trade-mark in Canada as alleged in its application;
(d) the trade-mark is not distinctive of the Applicant as it does not actually distinguish, nor is it adapted to distinguish, the wares of the Applicant from those of others, including those of the Opponent;
(e) the trade-mark is primarily merely the name of an individual who is living.
9 Decision of the Registrar, Applicant"s Record, vol. 1, p.28.
10 (1983), 73 C.P.R. (2d) 23 (F.C.T.D.).
11 Ibid at 30.
12 Ibid
13 Ibid
14 Ibid
15 This provision reads as follows: s. 12(2) A trade-mark that is not registrable by reason of paragraph (1)(a) of (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.
16 (1987) 14 C.P.R. (3d) 337 at 349.
17 Decision of the Registrar, op.cit., p.22.
18 Decision of the Registrar, op. cit., p.28.
19 The section reads: s. 6(1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.(3) The use of a trade-mark causes confusion with a trade-name if the use of both trade-mark and trade-name in the same area would be likely to lead to the inference that the wares or services associated with the trade-mark and those associated with the business carried on under the trade-name are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.(4) The use of a trade-name causes confusion with a trade-mark if the use of both trade-name and trade-mark in the same area would be likely to lead to the inference that the wares or services associated with the business carried on under the trade-name and those associated with the trade-mark are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including: (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (b) the length of time the trade-marks or trade-names have been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
20 (1975) 25 C.P.R. (2d) 126 (F.C.A.).
21 Decision of the Registrar, op. cit., p.29.
22 Ibid, p.25.
23 (1986) 13 C.P.R. (3d) 235 (F.C.T.D.)
24 Decision of the Registrar, op. cit., p.26.
25 Ibid
26 Ibid
27 Beverley Bedding and Upholstery Co. v. Regal Bedding and Upholstering Ltd. (1982), 60 C.P.R. (2d) 70 at 71 (F.C.A.). See: GSW Inc . v. The Registrar of Trade Marks and Sta-Rite Industries, [1999] F.C.J. No. 1062, respecting the standard of review of a decision of the Registrar. Gratefully, the standard of review is not an issue in the present case.
28 Affidavit of Francesca Moscone, Applicant"s Record, vol. 5, p.1059.
29 The Applicant filed the affidavits of John Wozny, Sunil Joneja, Vincenzo Valentino and Victoria Carrington (Applicant"s Record, pp.83, 55, 962, and 803 respectively). The Wozny affidavit is the primary source for this contention, with the affidavits of Sunil Joneja and Vincenzo Valentino being in support. As the Carrington affidavit purports to report unsubstantiated, second-hand opinion, I do not find its contents to be admissible as offending the rule against hearsay.
30 Applicant"s Memorandum of Fact and Law, p. 25, para. 79.
31 [1949], S.C.R. 678.
32 [1992] 3 S.C.R. 120.
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