Mantha & Associates v. Cravatte Di Pancaldi S.R.L., docket T-2534-97

Date: 19981113

Docket: T-2534-97

         IN THE MATTER OF SECTIONS 45, 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 against Registrar against Registration No. 379,823 for the trade-mark VITALIANO PANCALDI (WHITE) & Design

BETWEEN:             

MANTHA & ASSOCIATES

Appellant

- and -

LE CRAVATTE DI PANCALDI S.r.L.

Respondent

     REASONS FOR ORDER

TEITELBAUM J.:             

INTRODUCTION

    

[1]      This is an appeal from the decision of the Registrar of Trade-Marks dated September 23, 1997, whereby the respondent"s registration No. 379,823 for the trade-mark VITALIANO PANCALDI (White) & Design was maintained in association with "High fashion clothing for women and men and ready-to-wear clothing, namely: ties and foulards" pursuant to section 45 of the Trade-Marks Act . This appeal is made pursuant to sections 56 and 59 of the Trade-Marks Act.

FACTS

[2]      The appellant, MANTHA & ASSOCIATES, is a trade-mark agent having its principal place of business at Place du Portage, Hull, Quebec. The respondent, LE CRAVATTE DI PANCALDI S.r.l., is the owner of registration No. 379, 823 for the trade-mark VITALIANO PANCALDI (White) & Design registered on February 15, 1991 in association with "High fashion clothing for women and men and ready-to-wear clothing, namely: suits for men and women, ties, foulards, tunics, blouses, shirts, chemises, dresses, jackets, pants, skirts, pull-overs, belts, socks, shoes", and has its place of business at Via Cario Porta 10-40128 Bologna, Italy.

[3]      The trade-mark in issue is:

[4]      At the appellant"s request, section 45 proceedings were initiated by the Registrar of Trade-Marks against registration No. 379, 823, by notice dated February 20, 1996. In response to these proceedings, the respondent filed evidence by way of affidavit, signed by Mrs. Leda Ziosi, dated August 27, 1996. Based on this evidence, Mrs. Denise Savard, Senior Hearing Officer, Section 45 Division, issued a decision on behalf of the Registrar of Trade-Marks maintaining registration of the trade-mark VITALIANO PANCALDI & Design in association with "high fashion clothing for women, men and ready-to-wear clothing, namely: ties and foulards" (Appellant"s Record, pages 7-10). In these proceedings, the appellant only appeals from the decision of the Registrar dated September 23, 1992 which maintained the trade-mark in association with ties and foulards.

Decision of the Registrar

[5]      On September 23, 1997, Mrs. Denise Savard, Senior Hearing Officer, Section 45 Division, made a decision on behalf of the Registrar of Trade-Marks. On one hand, the decision amended the registration to delete several items from the statement of wares: suits for men and women, tunics, blouses, shirts, chemises, dresses, jackets, pants, skirts, pullovers, belts, socks and shoes on the basis that the trade-mark was not in use during the relevant time frame. On the other hand, the Registrar maintained the registration for high-fashion clothing for women and men, ready-to-wear clothing, namely, ties and foulards.

[6]      The Registrar also made the following findings :

a)      The mark used on the invoices is not substantially different from the trade-mark as registered, even though the square design surrounding the design PANCALDI has been omitted. In this respect, the appellant submits that in the said decision, the registered trade-mark is shown incorrectly, that is, minus the rectangle design, which is stated to be the trade-mark as registered.

         (Registrar"s decision, page 2)

b)      Photocopies of labels are sufficient to establish use since there are statements of facts in Ziosi"s affidavit indicating that the trade-mark is associated with the clothing items and accessories. On this basis, the registrar accepted Exhibit B as showing the manner by which the trade-mark was applied to the wares that were sold during the relevant period as illustrated by the invoices.

         (Registrar"s decision, page 3)

c)      That a so-called "pocket scarf" is a foulard, and therefore used in conjunction with the trade-mark as registered.

SUBMISSIONS

[7]      The appellant takes the following position on the issues:

a)      The registrar erred in finding that the evidence filed by the respondent showed use of the trade-mark VITALIANO PANCALDI (WHITE) & Design as registered in association with any of the wares covered under registration No. 379, 823, and in particular, in association with high-fashion clothing for women and men, and ready-to-wear clothing, namely ties and foulards.

    

b)      The registrar erred in holding that the mark shown in the exhibits attached to the respondent"s affidavit and the mark registered under No. 379,823 was essentially the same mark, and as such, constituted evidence of use of the trade- mark by the registrant.

c)      The registrar erred in finding that the attachment of photocopies of labels, rather than the labels themselves, is sufficient to show use of the trade-mark in the normal course of trade.

d)      The registrar erred in finding that a pocket scarf is a foulard.

[8]      The respondent contends that the Registrar was correct in finding:

a)      that the evidence filed by the respondent shows use of the trade-mark VITALIANO PANCALDI & Design as registered in association with the following wares mentioned in registration No. 379,823 i.e. high fashion clothing for women and men, ready-to-wear clothing, namely ties and foulards;

b)      that the mark shown in the exhibits to the respondent"s affidavit and the mark registered under No. 379, 829 is essentially the same mark, and as such, constitutes evidence of use of the trade-mark by the respondent/registrant;

c)      that the attachment of photocopies of labels, rather than the labels themselves, in the present circumstances with the facts put forward by Mrs. Ziosi, is sufficient to show use of the trade-mark in the normal course of trade.

d)      that a pocket scarf is a foulard.

ISSUES

[9]      The appellant"s submissions raise the main issue of whether the Registrar of Trade-Marks erred in finding that the respondent established use of the trade-mark as registered in No. 379,823 in conjunction with ties and foulards. However, this issue is contingent upon the determination of the following subsidiary issues:

i)      whether the introduction of photocopies of sample labels into evidence by way of affidavit is sufficient to show use of a trade-mark;

ii)      whether the trade-mark as it appears on the invoices and labels is substantially different from that registered under No.379, 823, and as such incapable to establishing use of the said registered trade-mark;

iii)      whether the so-called "pocket scarf" is a foulard and as such used in conjunction with the said registered trade-mark.

DISCUSSION

[10]      The decision rendered on behalf of the Registrar of Trade-Marks herein under appeal was made pursuant to section 45 of the Trade-Marks Act, which reads as follows:

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.

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.

[11]      Section 45 of the Act requires that, upon notice, the owner of the registration show with respect to each of the wares or services specified in the registration whether the trade-mark as registered was in use in Canada at any time during the three years prior to the issuance of the notice. In the present case, the notice was issued on February 20, 1996 and the respondent must show that the trade-mark was in use in Canada between February 20, 1993 and February 20, 1996.

[12]      In response to these proceedings, the respondent filed the affidavit of Mrs. Ziosi and Exhibits A and B in support thereof, dated August 27, 1996. Further to this appeal, the respondent filed the respondent"s record without any supplementary evidence. Therefore, the affidavit of Mrs. Ziosi, sworn to on August 27,1996 with exhibits attached thereto, is the only evidence which was before the Registrar and for consideration before this court.

[13]      To illustrate the use of the said trade-mark in the normal course of trade, the respondent introduced into evidence by way of affidavit, signed by Mrs. Ziosi, invoices dated between October 29, 1993 and March 30, 1995 showing sales of ties for women and men as well as pocket scarves which bear the trade-mark VITALIANO PANCALDI (Exhibit A) as well as photocopied samples of labels (Exhibit B), attached as exhibits to the affidavit of Mrs. Ziosi.

[14]      The appellant submits that the mark shown on the invoices and on the labels, which the affiant declares is seen on the pieces of clothing, ties and foulards, does not show the mark as registered. The registered mark consists of the words VITALIANO PANCALDI with a V design surrounded by a white rectangle. Exhibit B contains two photocopies of labels. The first photocopy is a mark which appears taken from a dark cloth label but without the rectangle. The second photocopy does show the label as registered. But in the appellant"s opinion the mark in the second photocopy is in Italian and consequently cannot demonstrate that the trade-mark was in use in Canada, to which submission I do not agree.

[15]      The only difference between the mark used in the invoices as represented by a photocopy in Exhibit A and the mark as registered is the rectangle around the V design.

[16]      The appellant relies on the case of Molson Companies Ltd. v. Mitches & Co. et al. (1980) 50 C.P.R. (2d) 180, for the proposition that modifications to a mark should not alter the distinctive character of a mark, and upon Buroughs-Wellcome v. Kirk, Shapiro, Eades, Cohen, (1983) 73 C.P.R. (2d) 13, for the proposition that use of different trade-marks, even though sharing similar characteristics will not support a registration.

[17]      As mentioned above, the only element missing is the rectangular shape around the words and V design. In my view, this issue is whether the mark represented without the rectangle is substantially different from the registered trade-mark. The Registrar considered the deviation minor and not apt to deceive or cause injury on the part of unaware purchasers. I am satisfied the Registrar applied the proper test in determining whether the mark represented without the rectangle was substantially different from the mark as registered. This test was stated by Mr. Justice Pratte in Registrar of Trade-marks v. Cie Internationale pour l"information CIL Honeywell Bull, [1985] 1 F.C. 406 (Fed. CA), at pages 408-409:

The problem to be resolved is not whether CII deceived the public as to the origin of its goods. It clearly did not. The real and only question is whether, by identifying its goods as it did, CII made use of its trade-mark "Bull". That question must be answered in the negative unless the mark was used in such a way that the mark did not loose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used. The practical test to be applied in order to resolve a case of this nature is to compare the trade-mark as it is registered with the trade-mark as it is used and determine whether the differences between these two 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.

[18]      Another issue raised by the applicant is whether the photocopies sufficiently demonstrate the use of the trade-mark as registered. The appellant relies on Boutiques ProGolf Inc. v. Canada (Reg. des marques de commerce) (1990), 27 C.I.P.R. 3 at 10 (F.C.), for the proposition that where only photocopies are available, there is an inevitable inference that only a photocopy was available, and that the labelling in question is no longer in use.

[19]      Mr. Justice Denault states:

Les pièces déposées au soutien de l"affidavit de Léonard Turgeon consistent en une carte d"affaires portant la marque BOUTIQUES PROGOLF & DESSIN, quelques photocopies de chèques, quelques factures, un communiqué, une formule de commande et plusieurs lettres adressées à des clients, tous des documents datés entre le 14 juin 1985 et le 25 août 1988, et portant la marque et dessin BOUTIQUES PROGOLF en en-tête. On n"a produit aucune marchandise portant la marque BOUTIQUES PROGOLF & DESSIN, ni aucun colis dans lesquelles ces marchandises auraient été distribuées. Le procureur de l"appelante a soutenu que pour prouver l"emploi de la marque, il pourrait suffire de démontrer qu"on l"utilisait comme entêtes de documents. Il a aussi indiqué que la factue PG 2396 concernait la vente d"un putter de 139 $ : selon lui, on prouvait ainsi que la marque était utilisée en liaison avec des marchandises pour lesquelles elle avait été enregistrée. Le procureur a enfin souligné que la formule de commande de divers articles de golf (BP069), déposée à l"appui de l"affidavit de M. Turgeon, énumérait des bâtons de golf, des sacs de golf etc, et qu"on devait en déduire soit qu"ils portaient la marque BOUTIQUES PROGOLF & DESSIN, soit que celle-ci était utilisée en liaison avec ces marchandises. Il n"a cependant déposé aucune "marchandise" portant la marque, ni établi que la marque était, de "toute autre manière", liée aux marchandises pour lesquelles on avait fait une demande d"enregistrement. Tout au plus a-t-on démontré que depuis 1985, la compagnie dont le nom corporatif est le même que celui de la marque qu"on tente de protéger utilisait la marque BOUTIQUES PROGOLF & DESSIN comme en-tête sur sa papeterie. Bref, on se servait de cette marque comme "nom commercial" mais non en tant que marque de commerce en liaison avec les marchandises qu"on avait indiquées lors de l"enregistrement.

En l"occurence, les documents soumis par l"appelante ne rencontrent aucun des éléments essentiels...

[20]      I disagree with the appellant"s interpretation of this case. I think the better view is that in such proceedings the owner of a trade-mark has the onus to adduce evidence sufficient to demonstrate the use of a registered trade-mark in association with the wares pursuant to subsection 45(1) of the Trade-Marks Act . In my view, the owner has a duty to lead the best evidence as to the use of the trade-mark in Canada: Thomas & Betts, Ltd. v. Panduit Corp. (1997), 74 C.P.R. (3d) 185 at 200-201 (Fed.T.D.), but it does not follow that evidence in the form of photocopies will result in an invalid registration. The only issue is whether the evidence shows use of the trade-mark as registered in Canada.

[21]      In this respect, I am satisfied that the evidence adduced by the respondent by way of affidavit shows use of the trade-mark as registered. The affidavit of Mrs. Ziosi clearly establishes that the labels were used in association with wares referred to in the registration. In Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62, affirming 45 C.P.R. (2d) 194, the Federal Court of Appeal held, at pages 63-64, that subsection 44(1), which was replaced by subsection 45(1), requires that evidence adduced by way of affidavit or statutory declaration not merely state but show use of the mark by describing the use of the mark within the meaning of the definition of use in the Trade- Marks Act. The statements put forth in Mrs. Ziosi"s affidavit were sufficient to satisfy the Registrar that the use of the trade-mark was shown in association with wares in Canada.

10. As a non-exhaustive illustration of the use of the trade-mark VITALIANO PANCALDI ( & design) TMA 379,823 by its registered owner Le Cravatte DiPancaldi S.r.1., in the normal course of trade, I file herewith as exhibit "A", in bulk, some invoices dated between October 29, 1993 and March 30, 1995, showing sales of ties for women and for men, as well as pocket scarves to PANCALDI"s Canadian distributor, for clients whose names are also indicated on the invoices, where available. The amounts shown in the "unit price" column are in Italian lira; 100 lira is approximately equivalent to 0.09c Canadian dollar; (one lira = .0000918c).

11. All the items mentioned in the invoices consisting of exhibit "A" bear the trade-mark VITALIANO PANCALDI ( & design); as a non-exhaustive illustration of the use by PANCALDI of its trade-mark VITALIANO PANCALDI ( & design) on such items and the manner in which the trade-mark is associated with the clothing items and accessories, I file herewith, as exhibit"B", in bulk, some samples of labels such as those fixed to the wares PANCALDI has sold in Canada: one sample is a fabric label sown in the clothing items (such as would be sown at the back of a tie or on the edge of a scarf); another sample is a cardboard label that may be attached to the item.

[22]      It is clear and unequivocal from the above that the labels with respondent"s trade-mark was used in relation to ties and foulards.

[23]      And last, but not least, is the issue of whether a pocket scarf is a foulard. To make this determination, I would refer to the Oxford English Dictionary, 2^nd Ed., vol. VI, at page 118, where "foulard" is defined as follows:

1.      A thin flexible material of silk or of silk mixed with cotton.

2.      A handkerchief of this material.

In vol. XI, at page 1110, "pocket-handkerchief" is defined as a handkerchief carried in the pocket. And in vol. XIV, at 590, "scarf" is defined as a "broad strip of silk, gauze hung loosely over the shoulders or otherwise as an ornamental accessory to the costume" and as a "band of warm and soft material worn round the neck in cold weather".

[24]      In light of the foregoing definitions, I find that the Registrar was correct in finding that a pocket scarf is a foulard.

Standard on Appeal

[25]      Before I conclude, I should say a few words about the standard of review on appeal. The parties have referred me to different case law in their written submissions and I find that they are not inconsistent. In Beverly Bedding & Upholstery Co. v. Regal Bedding and Upholstery Ltd. (1982), 60 C.P.R. (2d) 70, at page 70, the Court of Appeal held that the standard was not whether "the Registrar has really gone so wrong as to make it necessary to interfere with his decision", but "whether the Registrar has gone wrong". In 88766 Canada Inc. v. Paulaner-Salvator-Thomasbrau A.G. (1996), 68 C.P.R. (3d) 360, I had the opportunity to consider the standard of review on appeal, at page 367:

In the case of Classic Door & Millwork Ltd. v. Oakwood Lumber & Millwork Co. (1996), 63 C.P.R. (3d) 337 (F.C.T.D.) at 339, a case involving an opposition to the registration of a trade- mark, the Associate Chief Justice states, in relation to the standard of review applicable where a registrar's decision is appealed:

Before embarking upon an analysis of these alleged errors, I must consider the standard of review applicable to these proceedings.

In Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1987), 14 C.P.R. (3d) 133 at p. 135, 11 C.I.P.R. 1, 9 F.T.R. 136 (T.D.), Strayer, J. (as he then was) commented on the applicable standard:

" in my view the court should be reluctant to reverse the finding of the registrar or chairman unless it is clearly satisfied that he came to the wrong conclusion on the facts or unless there is significant new evidence placed before the court that was not before the registrar."

This position was further echoed by my colleague Denault, J. in Mitac Inc. v. Mita Industrial Co. (1992), 40 C.P.R. (3d) 387 at pp. 391-2, 51 F.T.R. 281, 31 A.C.W.S. (3d) 289 (T.D.), where he stated:

" ... in cases such as these, the onus on the appellant is two-fold. First, the appellant must establish that the hearing officer erred in his appreciation of the facts or in his interpretation of the law. It is well-established that such a decision carries considerable weight and is not to be lightly set aside."

[26]      In my view, these decisions are not incompatible and I find that the standard of review on appeal requires that the court be clearly satisfied that the Registrar came to the wrong conclusion on the facts or erred in law before the Court interferes with the Registrar"s decision.

CONCLUSION

[27]      I am satisfied that the Registrar did not commit any reviewable error in finding that the photocopies are apt to show use of a trade-mark, in finding that the labels were not substantially different and that the "pocket scarf" is a foulard. I am also satisfied and I concur with the Registrar"s finding that the evidence adduced by way of affidavit clearly shows use of the trade-mark as registered with wares in Canada as required by section 45 of the Act. In my view, the Court should be reluctant to reverse the finding of the Registrar unless I am satisfied the Registrar erred, that is to say, come to a wrong conclusion on the facts.

[28]      Mrs. Ziosi swore to the fact that the labels, photocopied on Exhibit B to her affidavit, were used in Canada in sales of ties and foulards. I have no reason to disbelieve her. Obviously, the Registrar was also satisfied with her evidence.

[29]      The appeal is denied, with costs.

    

                             "Max M. Teitelbaum"

                        

J.F.C.C.

Ottawa, Ontario

November 13, 1998