Date: 20071212
Dockets: T-1531-07
Citation: 2007 FC
1301
Toronto, Ontario, December 12, 2007
PRESENT: The Honourable Mr. Justice Harrington
BETWEEN:
SOCIEDAD AGRICOLA SANTA TERESA LTDA. and
VINCENTE IZQUIERDO MENÉNDEZ
Applicants
and
VINA LEYDA LIMITADA
Respondent
REASONS FOR ORDER AND ORDER
[1]
One
may not be able to judge a book by its cover, but one should know something
about a bottle of wine from its label; the more the better. The respondent, a
wine producer from the Leyda Valley in Chile, applied to the
Registrar of Trade-marks to register “Leyda” as a trade-mark for use in
association with wine. The application was granted over the opposition of
Sociedad Agricola Santa Teresa Ltda. and Vincente Izquiero Menéndez, two other
wine producers from the same valley. They have appealed to this Court.
[2]
The
appeal raises a legal issue. The standard of review is correctness. The case
turns on the meaning of section 12(1)(b) of the Trade-Marks Act
which reads:
12. (1) Subject to section 13, a trade-mark is
registrable if it is not
[…]
(b) whether
depicted, written or sounded, either clearly descriptive or deceptively
misdescriptive in the English or French language of the character or quality
of the wares or services in association with which it is used or proposed to
be used or of the conditions of or the persons employed in their production
or of their place of origin;
[…]
[Emphasis
added]
|
12. (1)
Sous réserve de l’article 13, une marque de commerce est enregistrable sauf
dans l’un ou l’autre des cas suivants :
[…]
b) qu’elle
soit sous forme graphique, écrite ou sonore, elle donne une description
claire ou donne une description fausse et trompeuse, en langue française ou
anglaise, de la nature ou de la qualité des marchandises ou services en liaison
avec lesquels elle est employée, ou à l’égard desquels on projette de
l’employer, ou des conditions de leur production, ou des personnes qui les
produisent, ou du lieu d’origine de ces marchandises ou services;
[…]
[Je
souligne]
|
[3]
Based
on the evidence before him, the Registrar found as a fact that Leyda, or the Valley of Leyda, is a region
in Chile where wine is produced.
However, he was not satisfied that it had been designed by the Chilean
Government as an appellation of origin.
[4]
In
his opinion, the words “clearly descriptive” modified the meaning of the term
“place of origin” Thus, it was not enough that wine be produced in the Valley
of Leyda; the average Canadian consumer, on first impression, must perceive the
proposed trade-mark as the place where the wine originated. There was not
enough evidence in the record to allow him to make that finding. He relied upon
the decision of Mr. Justice Cattanach in Drackett Co. of Canada v. American
Home Products Corp., [1968] 2 Ex.C.R. 89, 55 C.P.R. 29.
Discussion
[5]
The
appeal is under section 56 of the Act which allows the applicants to bring
forth evidence which was not before the Registrar. The new evidence before me
establishes as a fact that “Valle de Leyda” (in Spanish) is and has been an
appellation of origin following an application made by a group of wine
producers to the Chilean Ministry of Agriculture in December 2001, and
acceptance thereof 12 February 2002 by way of “Decreto 17” which was published on
10 May 2002. All these dates are after the trade-mark application. I hasten to
add that, in my opinion, the facts of whether a name signifies a geographical area
and whether that area produces wine are not contingent upon a government decree.
While there may be such agricultural laws in force in France, Italy and Chile, there may not be in
other places such as Canada, the United States and Australia. The fact of the matter is, beyond doubt, that
Leyda is a place in Chile where wine was produced
at the time the application for registration was made in 2001. No other date is
more favourable to the respondent, and so it is not necessary to consider
whether some later date should have been the benchmark.
[6]
In
my opinion, the Registrar erred in law in that he misapplied Drackett,
above. It is quite true, as he noted, that Mr. Justice Cattanach said:
The word " clearly" in s. 12(1)(b) of
the Act, which precludes the registration of a trade mark that is "clearly
descriptive ... of the character or quality of the wares or services in
association with which it is used or proposed to be used ...", is not
synonymous with "accurately" but rather the meaning of the word
"clearly" is "easy to understand, self-evident or plain".
[7]
However,
Mr. Justice Cattanach was speaking of the “character” or “quality” of the wares,
not “their place of origin”. The generality of his language must be limited by
context. The case before him was an appeal from the decision of the Registrar
rejecting an opposition to an application to register “Once-a-Week” for use in
association with a “floor cleaner”. The place of origin of the wares was not in
issue. Furthermore, he was speaking of a positive first impression, rather than
the absence of impression of one who may be geographically or vinaculturally
challenged. He also said:
My first impression, and my continuing impression, is that
the words ONCE-A-WEEK would convey to a prospective purchaser and immediately
identify a floor cleaner with which it is associated as one that need be used
only once a week and that one application thereof would endure for that period
of time.
[8]
Once
the Registrar found as a fact, as he did, that Leyda is a wine producing region
in Chile, as a matter of law he was required to conclude on the record before
him that the opposition was well founded.
[9]
Those
“far away places with strange sounding names” may call some more than others,
but section 12(1)(b), at least as far as “place of origin” is concerned,
is not dependent on the knowledge, or lack thereof, of the average Canadian
consumer. The Registrar rightly pointed out that there was no real evidence
before him as to the state of mind of such a person. Would he or she be one who
reads the wine magazines referred to by those who opposed the application, or
one whose knowledge is limited to red, white, rosé or bubbly? Over the past several
years, a great many wines have been introduced to the market from “new world”
countries such as Chile, Argentina, Australia and New Zealand. Other countries may follow
suit. Although decided in a different context, the decision of the Supreme
Court in Home Juice Co. v. Orange Maison Ltée, [1970] S.C.R. 942, 16
D.L.R. (3d) 740, can be relied upon for the proposition that a shrewd trader
should not be permitted to monopolize the name of a foreign wine district in
Canada by registering it as a trade-mark.
[10]
If
this registration were to stand, it would mean that the applicants, wine
producers from the Leyda
Valley, would not be able to
refer to that fact on their labels, or in their promotional literature. They
might be limited to calling their wine Chilean red or white. This would give
Vina Leyda Limitada an unfair advantage. Geography is one of the important
considerations in assessing whether one should try a new wine. Producers from a
specific area want to promulgate their area in the belief that their wine is
superior to the wine of that country as a whole. A consumer might well think
that a wine from a delimited area ought to be superior to a “vin ordinaire”. If
the applicants were not able to market their wines in Canada with reference to
the word “Leyda”, there is a risk that their wine might be considered “plonk”
and avoided (There are different legends as to the origin of the word “plonk”.
The one I prefer is that a Monsieur Plonque was the purveyor of cheap wine to British
Troops in World War I).
[11]
This
decision is consistent with the approach taken by Mr. Justice Denault in Jordan
& Ste-Michelle Cellars Ltd. v. Gillespies & Co. Ltd. (1985), 6
C.P.R. (3d) 377. The registered mark “Toscano” for use in association with wine
was later expunged upon evidence that Toscano was the actual name of wine
emanating from Tuscany, Italy, and therefore not registrable.
[12]
Although
not strictly relevant, the registrar maintains a list of geographical
indications that identifies the region from which a wine or spirit emanates. Section
14.11 of the Act prohibits a person from adopting a protected geographical
indication as a trade-mark. Listing does not appear to take the knowledge of
the average Canadian consumer into account. For instance, “Costers del Segre”,
which is protected, may not be a household name in Canada. It is a Spanish
appellation created in 1986.
[13]
The
respondent did not appear to contest this appeal. Nevertheless, the Registrar’s
decision stands until set aside, and this Court does not give judgment on the
pleadings. Indeed, rule 184 provides that an allegation of fact in a pleading
that is not admitted is deemed to be denied. Applicants’ counsel properly
brought to the Court’s attention the decision of Mr. Justice McKeown in Consorzio
del Prosciutto di Parma v. Maple Leaf Meats Inc., [2001] 2 F.C. 536, 11
C.P.R. (4th) 48, affirmed without additional reasons, 2002 FCA 169. However,
that case is distinguishable on the grounds of prior use. At the time the
application was made to expunge the trade-mark “Parma”, it had been used in Canada for 39 years, 26 of
which as a registered trade-mark. Thus sections 12(2) and 18(1)(b) were
in issue. A trade-mark not otherwise registrable because it is descriptive of the
place of origin of the wares is nevertheless registrable if it had become
distinctive at the date the application was filed. Furthermore, the
registration is not invalid if it was distinctive at the time proceedings
bringing its validity in question were commenced.
[14]
The
facts in this case are quite different. The evidence is that “Leyda” had not
been in use in Canada in association with wine
at the time the trade-mark application was made, and had not become
distinctive.
[15]
The
appeal shall be granted. However, as it has not been contested, there shall be
no order as to costs.
ORDER
THIS
COURT ORDERS that:
a. the appeal is allowed;
b. the decision rendered by
the Registrar of Trade-marks, dated 2 April 2007, dismissing the applicants’ opposition
to the registration of the respondent`s proposed trade-mark is set aside;
c. the applicants’
opposition to the trade-mark LEYDA (application 1,098,023) is allowed, and the
respondent’s application for the trade-mark LEYDA, in association with wines,
is dismissed;
d. the whole without costs.
“Sean Harrington”
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