Date: 20091027
Docket: T-209-09
Citation: 2009 FC 1095
Ottawa, Ontario, October 27,
2009
PRESENT: The Honourable Mr. Justice Near
BETWEEN:
LORO
PIANA S.P.A.
Applicant
and
CANADIAN COUNCIL OF
PROFESSIONAL
ENGINEERS (CCPE)
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
This
is an appeal pursuant to section 56 of the Trade-marks Act, R.S., 1985,
c. T-13 and Rule 300(d) of the Federal Court Rules (SOR/98-106), from a
decision rendered by a Hearing Officer of the Trade-marks Opposition Board (the
Hearing Officer) dated December 11, 2008 in a trade-mark proceeding initiated
under section 45 of the Trade-marks Act (or the Act) amending the
registered trade-mark ING. LORO PIANA & C. & DESIGN registration No.
TMA 444,121, under subsection 45(3) of the Trade-marks Act.
I. Background
[2]
The
Applicant is the owner of registered trade-mark ING. LORO PIANA & C. &
DESIGN, trade-mark No. TMA 444,121 (the trade-mark). The design element is a
crest. The trade-mark covers the following wares: yarns and treads; fabrics;
clothing, namely jackets, coats, skirts, trousers, cloaks, mantles, overcoats
and knitted vests, scarves, mufflers, shawls and gloves (the registered wares).
On July 13, 2007 the Register of Trade-marks recorded a change of name of the
registered owner of the trade-mark from Ing. Loro Piana & C. S.P.A. to Loro
Piana S.P.A.
[3]
On
January 2, 2007, at the Request of the Canadian Council of Professional
Engineers (the Respondent), the Register of Trade-marks issued a Notice under subsection
45(1) of the Trade-marks Act requiring Ing. Loro Piana & C. S.P.A.,
the then registered owner of the trade-mark ING. LORO PIANA & C. &
DESIGN, to file evidence showing, with respect to each of the wares specified
in the registration, whether the trade-mark had been used in Canada at any time
within the three-year period immediately preceding the date of the Notice,
specifically January 2, 2004 to January 2, 2007 (the relevant period).
[4]
In
response to the section 45 Notice, the Applicant filed an affidavit and
accompanying exhibits of Marco Paolo Baldanza, Chief Financial Officer of Loro
Piana S.P.A., dated October 9, 2007. In his affidavit, Mr. Baldanza stated that
the trade-mark had been used in Canada during the relevant period
for the registered wares. The affidavit stated that the Applicant specialized
in the manufacture and sale of high quality fabrics and designed and produced a
line of ready-to-wear and tailor-made clothing for men, women and children. The
wares are manufactured in the registrant’s own facilities and are distributed
through a worldwide network of directly operated Loro Piana stores, franchises
and specialty stores.
[5]
Attached
to the affidavit as an exhibit was a representative label sample showing the
trade-mark thereon which is sewn into the company’s wares and a hang tag
showing the trade-mark thereon which is also attached to the wares; a
promotional brochure; photocopied invoices and an index that, according to Mr.
Baldanza, showed sales by the registrant of the trade-marked wares in Canada
during the relevant period. This was the evidence before the Hearing Officer at
the time of the decision.
[6]
Subsequently,
neither the Applicant nor Respondent submitted written arguments to the
Registrar nor requested an oral hearing. The Respondents informed the Registrar
that they were interested in receiving a decision. The Hearing Officer issued a
written decision on December 11, 2008 (the decision).
[7]
The
Respondent did not file a Notice of Appearance and took no position in this
Application.
II. The
Decision
[8]
The
Hearing Officer issued a written decision that use of the trade-mark ING. LORO
PIANA & C. & DESIGN had been shown for the wares described as “fabrics”
but that use had not been shown for the remaining wares in the registration, namely
“yarns and treads; clothing, namely jackets, coats, skirts, trousers, cloaks,
mantles, overcoats and knitted vests, scarves, mufflers, shawls and gloves”
(“the remaining wares”) and that there was no evidence of special circumstances
excusing the absence of use. Therefore, the Hearing Officer determined that the
registered wares should be amended to delete the remaining wares.
[9]
The
Hearing Officer made several determinations based on the evidence before her. Firstly,
the additional wording on the labels in the exhibits would not be perceived as
forming part of the trade-mark per se. Secondly, that the specified
goods listed on the invoices were difficult to discern as they were listed by
product code rather than word description and that there was no explanation as
to which wares related to the specific product codes. Thirdly, that the
invoices reflected sales of “fabrics”, but the Officer was unable to conclude
whether there was evidence of sales with respect to the remaining registered
wares.
[10]
Based
on these findings, the Hearing Officer found that the evidence submitted
reflected sales of “fabrics” but, without an explanation as to which wares
related to the remaining product codes, she was unable to conclude whether
there was evidence of sales with respect to the remaining wares.
[11]
I
agree with and adopt the Hearing Officers conclusion with regard to the ware
“fabrics” and will consider the remaining wares in these reasons.
III. Standard
of Review
[12]
Under
subsection 56(1) of the Act, an appeal lies to the Federal Court of any decision
of the Trade-mark Registrar:
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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
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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.
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[13]
Under
subsection 56(5) of the Act new evidence may be filed on appeal and the Federal
Court may exercise any discretion vested in the Registrar:
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Additional
evidence
56 (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.
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Preuve
additionnelle
56
(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.
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[14]
The
standard of review on appeal where no new evidence is filed that would have
materially affected the Registrar’s findings or exercise of discretion is
reasonableness (see Mattel Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R.
772, 49 C.P.R. (4th) 321 at paragraphs 40-41, Guido Berlucchi & C.S.r.l.
v. Brouillette Kosie Prince, 2007 FC 245, 49 C.P.R. (4th) 321 at paragraph
23, Dunsmuir v. New Brunswick, 2008 SCC 9, [2008] 1
S.C.R. 190).
[15]
When
additional evidence is filed in the appeal that would have materially affected
the Registrar’s findings of fact or the exercise of discretion, the Court must
decide the issue de novo considering all of the evidence before it (Shell
Canada Limited v. P.T. Sari Incofood Corporation, 2008 FCA 279, 68 C.P.R.
(4th) 390). In assessing the impact that additional evidence will have for the
standard or review, the question is the extent to which the additional evidence
has a probative significance that extends beyond the material that was before
the Board (Guido Berlucchi & C.S.r.l., above and Fairweather
Ltd. v. Canada (Register of Trade-marks), 2006 FC 1248, C.P.R. (4th) 50).
[16]
At
the Opposition Board, the Applicant filed the affidavit of Mr. Baldanza and
accompanying exhibits. The Applicant filed additional evidence on appeal to
this Court including a second affidavit of Mr. Baldanza, Chief Financial
Officer of Loro Piana S.P.A., dated March 24, 2009.
[17]
The
Applicant submits that the second affidavit with accompanying exhibits,
combined with first affidavit that was before the Hearing Officer, confirms
that the trade-mark was in use in Canada by the registrant
during the relevant period in association with each of the remaining wares.
[18]
In
this second affidavit, Mr. Baldanza states that in addition to applying the
trade-mark to “fabrics” it has also applied it to the remaining wares which
were sold to Canadian customers during the relevant period, specifically
between March 1, 2004 and December 15, 2006. The affiant states that the
invoices relate to a number of items, including the remaining wares and that
his company’s trade-mark was applied to labels and hang tags affixed to each of
the goods identified in these exhibits. In support of these statements, Mr. Baldanza
included invoices and representative labels and hang tags as exhibits to the
second affidavit.
[19]
Mr.
Baldanza included in the second affidavit invoices dated after the relevant
period as evidence of continuous use. The issues of continuous or token use are
not at issue in this matter (see Boutiques Progolf Inc. v. Marks & Clerk
(1992), 54 C.P.R. (3d) 451, 164 N.R. 264 (F.C.A.). Therefore, this evidence of
continuous use was not considered.
[20]
In
the second affidavit, Mr. Baldanza also states that while the invoices do not
specifically refer to “trousers”; “coats”; “cloaks, mufflers or mantles”, it
has sold “pants”; “blazers” and “capes and stoles” which it considers to be the
same.
[21]
I
am satisfied that the new evidence is of a probative significance such that it
would have affected the Registrar’s decision. Therefore, the matter will be
considered de novo.
IV. General
Principles related to section 45 of the Trade-marks Act
[22]
Section
45 of the Trade-marks Act is designed to be a simple summary and
expeditious procedure to remove marks which are not bona fide claimed by
their owners as active. Section 45 proceedings are not intended to act as a
substitute for abandonment proceedings nor to resolve substantive rights that
may be in dispute between the parties.
[23]
Section
45 is set out as follows:
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Registrar
may request evidence of user
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.
Form
of evidence
(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.
Effect
of non-use
(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.
Notice
to owner
(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 therefore to the registered owner of the trade-mark and to
the person at whose request the notice referred to in subsection (1) was
given.
Action
by Registrar
(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.
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Le
registraire peut exiger une preuve d’emploi
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.
Forme
de la preuve
(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.
Effet
du non-usage
(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.
Avis
au propriétaire
(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.
Mesures
à prendre par le registraire
(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.
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[24]
The
registered owner bears the burden of proof in a section 45 proceeding. The
owner must establish a prima facie case of use within section 4 of the Trade-marks
Act and any doubt there maybe with respect to the evidence must be resolved
in favour of the trade-mark owner (Fairweather Ltd., above, at paragraph
41). An affidavit containing bare allegations of use that simply tracks the
statutory language is insufficient. The affidavit must not merely state but
show use by describing facts from which the Registrar or Court can form an
opinion or logically infer use (see Guido Berlucchi & C.S.r.l.,
above, at paragraphs 19- 20).
[25]
A
section 45 proceeding is intended to be a simple, expeditious procedure to get
rid of “deadwood” from the registry and is not to be an exercise in meticulous
verbal analysis (see the discussion by Justice Roger Hughes in Levi Strauss
& Co. v. Canada (Register of Trade-marks), 2006 FC 654, 51 C.P.R. (4th)
434 at paragraphs 17-21). Where the language used to describe a ware has
changed with common usage, but the use of the trade-mark for those wares has
continued, the use of the outmoded word will be allowed to remain.
V. Argument
and Analysis
A. Authority
to Make the December 11, 2008 Decision
[26]
Initially
the Applicant argued that the decision did not appear to have been rendered under
the appropriate authority. It was their position that the Officer did not state
in her decision that she was acting on behalf of the Register of Trade-marks or
that she was rendering the decision pursuant to authority delegated to her by
the Register of Trade-marks under subsection 63(3) of the Trade-marks Act.
[27]
Subsequently,
the Trade-marks Office provided the Applicant with a copy of a written
instrument signed by the Registrar of Trade-marks, dated January 24, 2008,
authorizing the Hearing Officer to exercise the Registrar’s powers pursuant to
section 63 for the purpose of, inter alia, section 45 of the Act. The
Applicant now takes the position that the delegation of power to the Hearing
Officer appears to be proper and therefore the decision appears to have been
rendered on behalf of the Register of Trade-marks. Therefore, this issue need
not be considered.
B. The
Second Baldanza Affidavit
[28]
The
Applicant argues that the second Baldanza affidavit establishes that the
remaining wares were sold to Canadian customers in association with the
trade-mark between January 2, 2004 and January 2, 2007. They also argue that
the second Baldanza affidavit establishes that the registrant has applied the
trade-mark to labels and these labels were applied to the goods sold as
identified in the photocopied invoices. The first Baldanza affidavit shows the
manner of use of the labels and hang tags, which are affixed to or attached to
the wares.
[29]
I
note that the invoices of sales are dated within the relevant period and
provide evidence of sales made by the Applicant to Canadian entities.
[30]
The
Applicant provided evidence in the form of invoices from March 1, 2004 to
December 2006. The invoices provide evidence of sales of the following wares
included in the registration: yarns, jackets, coats, skirts, trousers, cloaks,
mantles, overcoats, scarves, mufflers, shawls and gloves. In drawing this
conclusion, I have determined the sale of “pants” to be “trousers”; “blazers”
to be “coats”; “capes” to be “cloaks” or “mantles”, and “stoles” to be
“mufflers”. The invoices provide evidence of the sale of “vests”, while the
registration is for “knitted vests”. However, following the reasons of Justice
Hughes in Levi Strauss & Co., above, I am satisfied that for this
matter the sale of “vests” will be considered “knitted vests”.
[31]
As
stated by the Applicant at the hearing, there was no evidence of the sale of
“threads” in association with the trade-mark. The Applicant argues that the
threads accompanied the sale of the clothing identified in the Exhibits to
permit their repair. However, without evidence of use of the trade-mark in
association with threads in Canada, such as evidence of sales, the ware “threads”
should be removed from the registration.
[32]
Also
included on the invoices are sweaters, blouses, pullovers and shirts, wares
that were not specifically referenced in the registration. I consider these
wares to be evidence of the sale of “clothing”.
C. Deviations
from the Registered Form of the Trade-Mark
[33]
The
test to determine whether a trade-mark with a deviation is substantially
different from the registration was set out by Justice Pratte in Registrar
of Trade-marks v. Compagnie International pour l’informatique CII Honeywell
Bull, [1985] 1 F.C. 406, 4 C.P.R. (3d) 523 (F.C.A.) 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 lose 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.
[34]
I
also note that in Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2
C.P.R. (3d) 535, [1984] T.M.O.B. No. 52, the Hearing Officer described two
principles relating to the acceptable deviation of a trade-mark from its form
as registered. First is the use of the mark in combination with additional
material. Second is the use of the mark that deviates slightly, but is not
substantially different from, the original registration.
[35]
The
labels and hang tags contain additional wording such as “FABRIC MADE IN ITALY”.
I agree with the Hearing Officer and Applicant that the trade-mark stands out
from the additional material and that the additional words would not be
perceived as forming part of the trade-mark per se, as they are in
proportionately smaller fonts and different styles of letters. Therefore, there
was no substantial deviation.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that:
1.
the
appeal is allowed and the December 11, 2008 decision of the Trade-marks
Opposition Board with respect to trade-mark registration No. TMA 444, 121 is
set aside;
2.
trade-mark
registration No. TMA 444, 121 will be maintained on the register but amended to
delete the ware “threads”; and
3.
no
costs shall be awarded.
“ D.
G. Near ”
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