Date: 20070202
Docket: T-710-06
Citation: 2007 FC 245
Ottawa, Ontario, March 2,
2007
PRESENT: The Honourable Justice Johanne Gauthier
IN
RE: Sections 45 & 46 of the Trade-marks
Act,
R.S.C.
1985, c. T-13;
IN
RE: A Notice under Section 45 of the Trade-marks
Act
issued
at the request of Brouillette Kosie Prince
against Registration TMA
282,874 in the name of
GUIDO
BERLUCCHI & C. S.r.l.;
IN
RE: A decision rendered by the Registrar of
Trade-marks
on
February, 22, 2006;
BETWEEN:
GUIDO BERLUCCHI & C. S.r.l.
Applicant
And
BROUILETTE KOSIE PRINCE
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
Background
[1]
This
is an appeal from the decision of the Registrar of Trade-marks to expunge Guido Berlucchi
& C. S.r.l.’s
(“Berlucchi”) trade-mark registered under number TMA 282,874 in 1983.
[2]
This
Cuvée Impériale Berlucchi trade-mark, shown in Appendix ‘A’, was registered for
use in association with wines, sparkling wines, white brandy, liqueurs and
aperitifs.
[3]
On
May 15, 2003, at the request of Messrs. Brouillette, Kosie and Prince, the Registrar
sent a section 45
notice to the applicant requesting that it provide evidence of use of its trade-mark
in Canada at any time during the preceding three years (May 15, 2000 – 2003).
Such evidence was to be produced in respect of each of the wares listed in the
registration.
[4]
In
response to this notice, the applicant filed an affidavit of Francesco Ziliani
(two versions: one in English, the other in Italian) in which the affiant describes
himself as a “duly executed representative of Guido Berlucchi & C.”. Mr.
Ziliani states that Berlucchi had sold sparkling wines in the ordinary course
of business in Canada during the relevant period and, more particularly, that it
had sold 300 bottles to Brunello Imports Inc., its exclusive agent for Ontario (Canada) on October
4,
2001. A copy of the invoice evidencing
such sale was attached as an exhibit to this affidavit. Mr. Ziliani further
states that the registered trade-mark was affixed to the bottles sold to
Brunello Imports Inc.
[5]
The
applicant and the respondent filed written arguments but neither party
requested an oral hearing before the Registrar.
[6]
In
its written representations, the respondent noted that Mr. Ziliani’s position
with Berlucchi was ambiguous. It also questioned what trade-mark was used on
the bottles sold to Brunello Imports Inc. given that the invoice itself simply
referred to “Cuvée Impériale Brut”.
[7]
It
was not disputed that Mr. Ziliani produced no evidence and gave no explanation in
respect of the use or non-use of the other wares listed in the registration. On
that basis, the Registrar concluded that the registration in respect of all
wares other than sparkling wines had to be expunged. This portion of the
decision is not contested by the applicant.
[8]
In
respect of sparkling wines, having considered the definition of use in subsection
4(1) of the Act (see Appendix “C”), the Registrar concluded that “the evidence
clearly shows a sale of ‘sparkling wines’ having occurred in Canada during the
relevant period”. However, the Registrar found that the evidence was ambiguous
as to whether the registered trade-mark itself had been used during that
period. She doubted that the new owner would have used the trade-mark as
registered because it specifically referred to the name of the previous owner.
Also, the invoice which referred to Cuvée Impériale Brut instead of Cuvée
Impériale Berlucchi added to the ambiguity. The Registrar further noted that
it would have been a simple matter for Mr. Ziliani to provide either a label or
a photograph of a bottle having a label affixed to it. Thus, she concluded
that she was not satisfied that the registered trade-mark had been used in association
with sparkling wines and also expunged the registration in respect of that
ware.
[9]
The
applicant contests the decision of the Registrar in respect of sparkling wines.
In support of its appeal, it filed a second affidavit from Mr. Ziliani (there
is a French and an Italian version). In his affidavit, Mr. Ziliani clarifies
his exact function within Berlucchi. He describes himself as its
vice-president and confirms that he had access to all the relevant records of
the company. This affidavit contains little new information but, at paragraph
10, the affiant attaches, as exhibit AZ2, a sample of the label that was
affixed to the bottles sold to Brunello Imports Inc. on October 4, 2001 (see
appendix B).
[10]
The
respondent was entitled to cross-examine Mr. Ziliani on his new affidavit (House
of Kwong Sang Hong International Ltd. v. Borden Ladner Gervais LLP, 2001 FCA
346, [2001] F.C.J. No. 1694 (QL)), but chose not to do so.
[11]
On
the basis of the new evidence supplied by Mr. Ziliani, the applicant asks the Court
to set aside the decision of the Registrar in respect of sparkling wines and to
reinstate the registration in association with that ware.
Issues
[12]
Prior
to the hearing, the issues raised by the parties in this case related primarily
to whether the trademark used by Berlucchi was so different from the trademark
as registered that its use was not “use” within the meaning of s. 4 of the Act.
As Berlucchi adduced new evidence in that respect, the parties also disagreed
on the impact of such evidence on the standard of review.
[13]
During
the hearing, the respondent put forth a new argument that was not specially raised
before the Registrar or in its written submissions to the Court. It questioned
whether Berlucchi’s single sale to Brunello Imports Inc. qualifies as a use of
the trademark in the ordinary course of trade. This raised a debate as to
whether this new issue was subject to a standard of review distinct from the one
to be applied to the first question set out above.
Analysis
[14]
Before
proceeding to a full assessment of the issues and the applicable standard(s) of
review, it is first instructive to conduct a general review of the principles
that underlie Section 45 of the Trade-marks Act.
General Principles
related to s. 45 Trade-marks Act
[15]
It
is important to keep in mind that the aim of Section 45 of the Act is not to
determine the rights of the parties to the trade-mark for this should be done
under section 57. Section 45 is meant to be a simple, summary and expeditious
procedure designed for removing deadwood from the register. The section is solely
intended to get rid of registered trade-marks that are obsolete or outdated. (see
Boutiques Progolf Inc. v. Canada (Registrar of Trade-Marks),
54 C.P.R. (3d) 451, [1993] F.C.J. No. 1363 F.C.A. (QL)).
[16]
In
reviewing the caselaw put forth by the parties, one must be aware that the
wording of section 45 (formerly section 44) has changed considerably throughout
the years. For example, prior to amendments made on January 1, 1994 (introduced
as a result of NAFTA), owners of registered trade-marks had to establish a
certain degree of current or contemporaneous use (see Progolf above). After
1994, such owners only had to establish use at any time during the relevant
period which at one point was two years preceding the sending of the section 45
notice and is now three years (Quarry Corp. v. Bacardi & Co., (1996) 72
C.P.R. (3d) 25, [1996] F.C.J. No. 1671 (QL)).
[17]
Although
some jurisprudence indicates that disclosure of the volume of sales or the
number of purchasers or transactions may have been relevant and necessary to
establish “use”, the bulk of the authorities agree that evidence of a single
sale, whether wholesale or retail, in the normal course of trade, can suffice
so long as it follows the pattern of a genuine commercial transaction and is
not seen as being deliberately manufactured or contrived to protect the
registration of the trade-mark at issue (Osler, Hoskin & Harcourt
v. Canada (Registrar of Trade Marks), (1997) 77 C.P.R. (3d) 475, [1997] F.C.J.
No. 1671 (QL); Philip Morris Inc. v. Imperial Tobacco Ltd., (1987)
13 C.P.R. (3d) 289
at 293, [1987] F.C.J. No. 26; Quarry Corp. v.
Bacardi & Co. (1996) 72 C.P.R. (3d) 25, [1996] F.C.J. No. 1671 (QL); Philip Morris
Inc. v. Imperial Tobacco Ltd. et al. (No.2), (1987) 17 C.P.R. (3d) 237, [1987] F.C.J. No. 848
(F.C.A.) (QL); Coscelebre, Inc. v.
Canada (Registrar of Trade Marks), (1991) 35 C.P.R. (3d) 74, [1991] F.C.J. No. 61
(QL); Pernod
Ricard v. Molson Companies Ltd., (1987) 18 C.P.R. (3d) 160, [1987] F.C.J. No. 1004
(QL).
[18]
In
s. 45 proceedings, the burden of proof is on the registered owner of the trade-mark;
however, it is clear that such burden is not a heavy one. The owner must only establish
a prima facie case of use within the meaning of section 4 of the Act. In
that respect, it is also clear that an affidavit containing bare allegations of
use that is simply tracking the statutory language is insufficient (Plough (Canada) Ltd. v.
Aerosol Fillers Inc., (1980) 53 C.P.R. (2d) 62; [1981] 1 F.C. 679
(QL)).
An affidavit must not merely state but show use by describing facts from which
the Registrar or the Court can form an opinion or can logically infer use
within the meaning of section 4.
[19]
As
noted by the Federal Court of Appeal in Central Transport Inc. v. Mantha and
Associates, (1995) 64 C.P.R. (3d) 354, [1995] F.C.J. No. 1544
(FCA) (QL);
In a sense all
statements in affidavits are "bald assertions"; what this court has
found to be inadequate in s. 45 proceedings are assertions of use (a matter of
law) as opposed to assertions of facts showing use: see Plough (Canada )
Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62, [1981] 1 F.C. 679, 34 N.R. 39. On
the judge's own summary of the evidence, it clearly showed facts establishing
use, i.e., that the appellant "conducted its transportation business in Canada
utilizing trucks and trailers bearing the trade mark". That is all that was
required.
[20]
That
being said, it is clear that if a registered owner chooses to produce evidence
of a single sale, he is playing with fire in the sense that he must provide
sufficient information about the context of the sale to avoid creating doubts
in the mind of the Registrar or the Court that could be construed against him.
[21]
With
respect to “ordinary course of trade”, as noted by the Federal Court of Appeal
in Phillip Morris (No.2) (above), when there is no evidence whatsoever
in the record as to the normal course of trade in an industry, it is not the
function of the Court to find and set standards of the normal course of trade.
In Phillip Morris (No. 2), the respondent was a manufacturer who
normally sold to wholesalers. Evidence of sales to a wholesaler was therefore
seen as evidence of the normal course of trade for the respondent.
… if there is
apparently genuine evidence as to the normal course of trade, the limited
nature of s. 44 proceedings does not allow a court to question that evidence on
the basis of its own view, unsupported by evidence, as to what constitutes the
normal course of trade.
There must, however, be some evidence from
which the court may infer normal course of trade and a statement to that effect
will be a beginning though not in and of itself sufficient.
[22]
Finally,
in respect of the trade-mark itself, the practical test is to compare the
registered trade-mark with the trade-mark actually used and “determine
whether the differences between the marks are so unimportant that an unaware
purchaser would be likely to infer that both, in spite of their differences,
identify goods having the same origin.” (Registrar of Trade Marks v. Compagnie
Internationale pour l’Informatiques CII Honeywell Bull, [1985] 1 F.C. 406,
[1985] 1 F.C. 406
(QL); Promafil Canada Ltée v. Munsingwear Inc., (1992) 44 C.P.R.
(3d) 59, [1992] F.C.J. No. 611
(F.C.A.) (QL)).
In other words, the registered owner must maintain identity and recognizability;
he must preserve the dominant features of the registered trade-mark to avoid
misleading the unaware purchaser.
Standard of Review
[23]
It
is undisputed that where on appeal no new evidence is filed that would have
materially affected the Registrar’s findings or exercise of discretion, the
standard is reasonableness simpliciter whether the issue is one of fact
or mixed fact and law (Molson Breweries, a Partnership v. John Labatt
Ltd. (2000), 5 C.P.R. (4th) 180,
[2000] F.C.J. No. 159
(F.C.A.) (QL); Footlocker
Canada Inc. v. Steinberg, 2005 FCA 99, [2005] F.C.J. No. 485 (F.C.A.)
(QL); Fairweather Ltd. v. Canada (Registrar of Trade-Marks), 2006 FC 1248, [2006] F.C.J. No. 1573
(QL)).
[24]
However,
when additional evidence is filed in the appeal that would have materially
affected the Registrar’s finding of fact or the exercise of his or her
discretion, the Court must decide the issue de novo after considering all
of the evidence before it (Maison Cousin (1980) Inc. c. Cousins Submarines
Inc., 2006 CAF 409, [2006] A.C.F. no. 1968 (QL)). In doing so, the Court
will substitute its own opinion to that of the Registrar without any
need to find an error in the Registrar’s reasoning.
[25]
To
determine whether the new evidence is sufficient to warrant a determination de
novo, one should look at the extent to which the additional evidence has a
probative significance that extends beyond the material that was before the Registrar.
If the new evidence adds nothing of significance, but is merely repetitive of
existing evidence, without increasing its cogency, the issue will be whether
the Registrar was clearly wrong (see Garbo Group Inc. v. Harriet Brown &
Co., 3 C.P.R. (4th) 224, [1999] F.C.J. No. 1763
(QL).
[26]
In
the case at hand, it is evident from the Registrar’s decision that the determinative
issue to be resolved was what trade-mark appeared on the label affixed to the
bottles sold to Brunello Imports Inc. In paragraph 10 of his new affidavit and
in exhibit AZ2, Mr. Ziliani provides the exact details of the trade-mark used
on the said bottles. There is no doubt that this evidence would have materially
affected the finding of the Registrar on this issue. This means that the Court
must exercise its discretion de novo to determine whether or not the
trade-mark affixed to the sparkling wines sold to Brunello Imports Inc. is
sufficiently similar to the registered trade-mark to constitute use of the said
trade-mark.
[27]
But
this is not the end of the matter. The Court must also decide what standard of
review will be applied to the second issue raised by the respondent during the
hearing of whether or not the mark was used in the ordinary course of trade.
[28]
Berlucchi
submits that it did not address this issue in Mr. Ziliani’s second affidavit
because this was not a contentious point. Thus, the Court should not intervene
unless it is convinced that this finding was not one that was reasonably open
to the Registrar on the basis of the evidence initially submitted.
[29]
In
this respect, the applicant relies on the decision of the Federal Court of
Appeal in Footlocker (above), where the Court of Appeal reversed
the trial judge who had confirmed an expungement decision but on grounds that
were totally different from those relied upon by the Registrar.
[30]
In
Footlocker, the Registrar had found that the evidence provided by the
registered owner about the use of its trade-mark on a sign affixed to the front
of a store located in Toronto was vague because it
did not expressly specify when that sign was displayed. The owner
appealed and produced new evidence that specified that the sign had been
affixed to the front of the store since 1999 and that it had remained there
continuously until the date of the s. 45 notice.
[31]
The
respondent in Footlocker raised a new argument before the court
unrelated to the timing of the trademark’s use on the sign. The respondent
argued instead that there was no evidence as to exactly which corporate entity
operated the store. In so arguing, the respondent noted that the Registrar had
not specifically addressed this issue and that the Registrar appeared to have
simply assumed that the operator was the registered owner. Meanwhile, the
original trademark holder argued that there was no new evidence on this issue
and that this issue could not be raised as part of the appeal, especially when
one considered that the respondent had chosen not to cross-examine their
affiant.
[32]
The
trial judge in Footlocker accepted the position of the respondent and
found that, given that it was now clear that the sign had been used during the
relevant period, the resolution of the dispute would turn on the new issue
raised by the respondent. He found that this was not a mere technicality but
part of the prima facie case that had to be established by the
registered owner. Ultimately, the trial judge concluded that this question of fact
could not be assumed nor logically inferred from the evidence that was before
the Registrar or the Court. Thus, he decided to confirm the expungement.
[33]
On
appeal in the Footlocker case, Justice Marshall Rothstein speaking for a
unanimous bench said that there had been no new evidence related to this
particular issue (ie proof of which corporate entity was the registered owner) before
the trial judge. Therefore, the decision of the Registrar on this point should
have been reviewed on the standard of reasonableness simpliciter.
Hence, the Court of Appeal found that had the trial judge properly deferred to
the Registrar’s finding on this issue (as was required under the reasonableness
standard), he would have allowed the appeal.
[34]
In
response to the applicant’s position that Footlocker calls for the
application of the reasonableness standard, the respondent submits three
arguments. First, it says that the Federal Court of Appeal in Maison Cousin (above)
has implicitly reversed its decision in Footlocker. It argues that, in
any case, Footlocker is bad law because sections 45 and 4 of the Act
calls for a single determination that should be subject to only one standard of
review in the same way that an opposition on the basis of confusion is subject
to a single standard of review even though it involves the weighing of several
individual factors pursuant to subsection 6(5) of the Act.
[35]
Second,
the respondent submits that, in the present case, there is new evidence that
would have materially affected the decision of the Registrar because in his
first affidavit Mr. Ziliani said that the transaction of October 4, 2001 is
representative but not exhaustive of the sales made in Canada, whereas it is
clear from his second affidavit that this was the only sale made during the relevant
period. The Court would therefore be justified to determine the issue de
novo.
[36]
Third,
the respondent suggests that the Registrar made no finding at all on the issue
of “sale in the ordinary course of trade” as this was unnecessary given that it
had already been concluded that there was insufficient evidence in respect of
the exact trade-mark used. Alternately, the respondent suggests that the
Registrar’s assumption that this was a sale made in the normal course of
business was unreasonable. On this last point, the respondent cites a lack of
evidence. More particularly, it points to a lack of proof related to: the
applicant’s business; sales volumes; client lists; LCBO listings; whether these
bottles actually reached consumers in Canada. Respondent says that
this Court should adopt the reasoning and the conclusion reached in Sim and
McBurney v. Majdell Manufacturing Co. Ltd., (1986) 11 C.P.R. (3d) 306,
[1986] A.C.F. No. 547 (QL), and Molson Companies Ltd. v. Halter, (1976)
28 C.P.R. 2d 158, [1976] F.C.J. No. 302 (QL).
[37]
The
Court has reviewed the decision of the trial judge and the Federal Court of
Appeal in Maison Cousin and it is apparent that there was a significant
amount of new material evidence before the trial judge. This new evidence
appears to have been materially relevant to all the factors listed under
section 6(5) of the Act and to the overall decision with respect to confusion.
For example, the applicant put before the trial judge three new trade-marks
that had to be considered in assessing the proposed mark (this was an appeal in
the context of an opposition pursuant to section 38 of the Act).
[38]
Thus,
the situation and the legal issue before the Federal Court of Appeal in Maison
Cousin were quite different than the ones that were before it in Footlocker.
In paragraphs 4-7 of Maison Cousin, the Federal Court of Appeal deals
with the role of the Court in respect of issues on which material new evidence
had been presented in appeal. As mentioned, it simply clarifies that in such
cases, the judge determines the matter de novo; that is, the Court does
not review the decision of the Registrar and needs not unduly limit its
discretion by looking for errors in the Registrar’s decision. The Court simply
starts afresh looking at all the evidence before it, old and new.
[39]
On
that basis, I am satisfied that the decision in Maison Cousin did not
change the law as applied in Footlocker. This Court is therefore bound
to follow the decision of the Federal Court of
Appeal in Footlocker as the present
case cannot be distinguished on its facts.
[40]
Indeed,
the Court cannot accept the respondent’s argument that there is new evidence
about the nature of the sale that would have materially affected the decision
of the Registrar on this particular issue. In the decision, the Registrar
observes that Mr. Ziliani states in his affidavit that “this invoice issued on
October 4, 2001 is representative and not exhaustive of one sale made by
Berlucchi”. The decision goes on, however, to note at page 6 that:
“this invoice appears to be
the registered owner’s only sale of the product in question in Canada during the
relevant period (in this regard, the invoice shows a sale of exactly 300
bottles of the product in question, the exact amount Mr. Ziliani has stated was
sold during the relevant period ie paragraph 5 of the affidavit) …”.
[41]
In
light of the foregoing, the Court resolves the standard of review in this case
as follows: the issues related to the appearance of the trademark and its use
will be decided de novo; the issue related to whether the trademark was
used in the ordinary course of trade will reviewed on a standard of
reasonableness simpliciter.
[42]
The
Court will now turn to resolving the issues themselves.
What
trade-mark was used by the applicant in relation to the transaction evidenced
by the invoice of October 4, 2001?
[43]
In
respect of this issue, the Court considered the arguments put forward by the
respondent including:
i)
the
fact that the label attached as AZ2 does not bear a date;
ii)
that
the word “Brut” does not appear on it;
iii)
that
exhibit AZ2 shows a label, not an actual bottle sold to Brunello Imports Inc.
[44]
The
Court is satisfied that there is no good reason to doubt the affiant’s
assertion that this label was affixed to the bottles that were sold in 2001.
There is absolutely no evidence that the word “Brut” would or should have to be
shown on these bottles of sparkling wines. There is no evidence either that all
labels bear a date. Here, it is evident that this label was used after 1987 as
it refers to the name of the company between 1987 and 2004.
[45]
That
said, the Court must now determine the impact of the differences between the
trademarks as shown in Appendices A & B which are described at paragraph 67
of the written representations of the respondent as follows:
i)
The representation of the wall and arches
appearing above the word “CUVÉE” in the version of the registered mark differs
from the version of the mark used;
ii)
Designs resembling leaves and/or flowers were
added to the version of the mark used whereas they do not appear in the version
of the registered mark;
iii)
The text which appears inside the oval differs
between the two versions;
iv)
The version of the registered mark uses the
expression MÉTHODE CHAMPENOISE, which is a common expression and in French,
whereas the version of the mark used uses an expression that is completely
different and in Italian, that is, METODO TRADIZIONALE CLASSICO;
v)
The words CUVÉE, IMPÉRIALE and BERLUCCHI appear
to be less important in the version of the mark as used, whereas in the version
of the registered mark they take up much more space; and
vi)
The outline or border of the oval in the version
of the mark used differs from the outline or border of the oval in the version
of the registered mark.
[Translation,
original in French]
[46]
The
Court simply cannot agree with the respondent that any of these differences
would - either on their own or taken together - constitute a significant
modification that could mislead an unaware consumer. The dominant features of
the registered trade-mark are the words Cuvée Impériale Berlucchi, the general
shape of the label and the general appearance or shape of the building.
[47]
The
change in the size of the script is almost imperceptible, as are the changes at
the bottom of the label. With respect to the difference in the name of the
registered owner and the reference to the method used, the Court finds that
these are not major distinguishing elements of registered trade-marks (see Promafil
and Honeywell Bull, above).
[48]
The
dominant impression and the visual impact of the two marks are in my view
generally the same. The Court is convinced that an unaware observer would
immediately believe that these bottles came from the same source.
Use in the Normal Course
of Trade
[49]
The
applicant says that the Registrar accepted that the sale of the 300 bottles to
his exclusive agent in Ontario was a genuine commercial
sale. In its view, a fair reading of the decision makes it clear that the
Registrar would have accepted that the sale was sufficient to establish use if
the applicant had properly established the identity of the trade-mark used on
those bottles.
[50]
The
Court agrees that the conclusion at page 5 of the decision that there was
clearly a sale in Canada in the relevant period can only be understood as
meaning that the Registrar accepted that this was a genuine commercial
transaction not deliberately manufactured or contrived to support the
registration of the trade-mark.
[51]
The
Court is satisfied after a probing examination of the evidence before the Registrar
that a reasonable conclusion was reached.
[52]
The
facts and the evidence given before the Registrar and before me are quite different
from those that were before the Court in the McBurney and Molson
Companies decisions. In Molson Companies, there was clear evidence
that challenged the credibility of the affiant and many details as to the
normal course of trade for the type of ware under review. Here, there is no
evidence of this sort and, as in any other proceedings, good faith is presumed.
[53]
In
McBurney, there was only a bare allegation of use instead of facts
demonstrating use. There was not even an assertion that the sales had been
made in the normal course of trade. Moreover, as noted under general
principles, it is now generally accepted that applicants do not need to put in
evidence the volume of their sales during the relevant period.
[54]
Here
not only does Mr. Ziliani attest that this sale was made in the ordinary course
of trade,
he explains the context in which it was made and in essence the basis of his
assertion.
[55]
In
any event, if as urged by the respondent, the Court had to determine de novo
this issue, I would be satisfied by the evidence before me that the applicant
has established a prima facie case that this sale was made in the
ordinary course of trade and constitutes proper use within the meaning of
section 4 of the Act. In coming to this conclusion, the Court has considered
all of the arguments raised by the respondent including the fact that Brunello
Imports Inc. is described as “mandataire” in the French version of Mr.
Ziliani’s last affidavit. In the present context, the Court is simply not willing
to infer that such term necessarily refer to a legal relationship per se
that would put in doubt the evidence of Mr. Ziliani.
Conclusion
[56]
The
Court is satisfied that the applicant has established a prima facie case
of use in Canada during the relevant period with respect to sparkling wines. Thus,
the registration number TMA 282,874 shall be restored in respect of sparkling
wines only.
[57]
The
parties made no representations in respect of cost at the hearing. The Court is
satisfied that the applicant should be entitled to costs assessed on the basis
of Tariff B Column III.
JUDGMENT
THE COURT ADJUDGES that
the appeal is allowed and the registration number TMA 282,874 shall be restored
in association with sparkling wines only. Costs to the applicant (Tariff B
Column III).
“Johanne
Gauthier”
ANNEX A
ANNEX B
ANNEX C
Trade-marks Act ( R.S., 1985, c. T-13 ) Loi sur les
marques de commerce ( L.R., 1985, ch. T-13 )
|
4. (1)
A trade-mark is deemed to be used in association with wares if, at the time
of the transfer of the property in or possession of the wares, in the normal
course of trade, it is marked on the wares themselves or on the packages in
which they are distributed or it is in any other manner so associated with
the wares that notice of the association is then given to the person to whom
the property or possession is transferred.
45. (1) The Registrar may at any time and, at the
written request made after three years from the date of the registration of a
trade-mark by any person who pays the prescribed fee shall, unless the
Registrar sees good reason to the contrary, give notice to the registered
owner of the trade-mark requiring the registered owner to furnish within
three months an affidavit or a statutory declaration showing, with respect to
each of the wares or services specified in the registration, whether the
trade-mark was in use in Canada at any time during the three year period
immediately preceding the date of the notice and, if not, the date when it
was last so in use and the reason for the absence of such use since that
date.
(2)
The Registrar shall not receive any evidence other than the affidavit or
statutory declaration, but may hear representations made by or on behalf of
the registered owner of the trade-mark or by or on behalf of the person at
whose request the notice was given.
(3) Where, by reason of
the evidence furnished to the Registrar or the failure to furnish any
evidence, it appears to the Registrar that a trade-mark, either with respect
to all of the wares or services specified in the registration or with respect
to any of those wares or services, was not used in Canada at any time during
the three year period immediately preceding the date of the notice and that
the absence of use has not been due to special circumstances that excuse the
absence of use, the registration of the trade-mark is liable to be expunged
or amended accordingly.
(4) When the Registrar
reaches a decision whether or not the registration of a trade-mark ought to
be expunged or amended, he shall give notice of his decision with the reasons
therefor to the registered owner of the trade-mark and to the person at whose
request the notice referred to in subsection (1) was given.
(5) The Registrar shall
act in accordance with his decision if no appeal therefrom is taken within
the time limited by this Act or, if an appeal is taken, shall act in
accordance with the final judgment given in the appeal.
56. (1)
An appeal lies to the Federal Court from any decision of the Registrar under
this Act within two months from the date on which notice of the decision was
dispatched by the Registrar or within such further time as the Court may
allow, either before or after the expiration of the two months.
(5) On an appeal under
subsection (1), evidence in addition to that adduced before the Registrar may
be adduced and the Federal Court may exercise any discretion vested in the
Registrar.
57.
(1) The Federal Court has exclusive original
jurisdiction, on the application of the Registrar or of any person
interested, to order that any entry in the register be struck out or amended
on the ground that at the date of the application the entry as it appears on
the register does not accurately express or define the existing rights of the
person appearing to be the registered owner of the mark.
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4. (1) Une marque de commerce est réputée employée en liaison avec des
marchandises si, lors du transfert de la propriété ou de la possession de ces
marchandises, dans la pratique normale du commerce, elle est apposée sur les
marchandises mêmes ou sur les colis dans lesquels ces marchandises sont
distribuées, ou si elle est, de toute autre manière, liée aux marchandises à
tel point qu’avis de liaison est alors donné à la personne à qui la propriété
ou possession est transférée.
45. (1) Le
registraire peut, et doit sur demande écrite présentée après trois années à
compter de la date de l’enregistrement d’une marque de commerce, par une
personne qui verse les droits prescrits, à moins qu’il ne voie une raison
valable à l’effet contraire, donner au propriétaire inscrit un avis lui
enjoignant de fournir, dans les trois mois, un affidavit ou une déclaration
solennelle indiquant, à l’égard de chacune des marchandises ou de chacun des
services que spécifie l’enregistrement, si la marque de commerce a été
employée au Canada à un moment quelconque au cours des trois ans précédant la
date de l’avis et, dans la négative, la date où elle a été ainsi employée en
dernier lieu et la raison de son défaut d’emploi depuis cette date.
(2) Le registraire ne peut recevoir aucune
preuve autre que cet affidavit ou cette déclaration solennelle, mais il peut
entendre des représentations faites par le propriétaire inscrit de la marque
de commerce ou pour celui-ci ou par la personne à la demande de qui l’avis a
été donné ou pour celle-ci.
(3) Lorsqu’il
apparaît au registraire, en raison de la preuve qui lui est fournie ou du
défaut de fournir une telle preuve, que la marque de commerce, soit à l’égard
de la totalité des marchandises ou services spécifiés dans l’enregistrement,
soit à l’égard de l’une de ces marchandises ou de l’un de ces services, n’a
été employée au Canada à aucun moment au cours des trois ans précédant la
date de l’avis et que le défaut d’emploi n’a pas été attribuable à des
circonstances spéciales qui le justifient, l’enregistrement de cette marque
de commerce est susceptible de radiation ou de modification en conséquence.
(4) Lorsque le
registraire décide ou non de radier ou de modifier l’enregistrement de la
marque de commerce, il notifie sa décision, avec les motifs pertinents, au
propriétaire inscrit de la marque de commerce et à la personne à la demande
de qui l’avis visé au paragraphe (1) a été donné.
(5) Le
registraire agit en conformité avec sa décision si aucun appel n’en est
interjeté dans le délai prévu par la présente loi ou, si un appel est
interjeté, il agit en conformité avec le jugement définitif rendu dans cet
appel.
56. (1) Appel de toute
décision rendue par le registraire, sous le régime de la présente loi, peut
être interjeté à la Cour fédérale dans les deux mois qui suivent la date où
le registraire a expédié l’avis de la décision ou dans tel délai
supplémentaire accordé par le tribunal, soit avant, soit après l’expiration
des deux mois.
(5) Lors de
l’appel, il peut être apporté une preuve en plus de celle qui a été fournie
devant le registraire, et le tribunal peut exercer toute discrétion dont le
registraire est investi.
57. (1) La Cour fédérale a une compétence
initiale exclusive, sur demande du registraire ou de toute personne
intéressée, pour ordonner qu’une inscription dans le registre soit biffée ou
modifiée, parce que, à la date de cette demande, l’inscription figurant au
registre n’exprime ou ne définit pas exactement les droits existants de la
personne paraissant être le propriétaire inscrit de la marque.
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