Date: 20091027
Docket: T-210-09
Citation: 2009 FC 1096
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., registration No. TMA 359, 462
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.,
trade-mark No. TMA 359, 462 (the trade-mark). The trade-mark covers the
following wares: textile fabrics, bed covers, blankets, 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., 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 sample of a label 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. Also
attached to the affidavit were photocopied invoices and an index that Mr.
Baldanza stated 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. had been shown for the wares described as “textile fabrics” but
that use had not been shown for the remaining wares in the registration, namely
“bed covers, blankets, scarves, mufflers, shawls and gloves” (the remaining
wares) 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. First,
the additional wording on the labels in the exhibits would not be perceived as
forming part of the trade-mark per se. Second that, with respect to the
design element, a typical consumer, upon viewing the registrant’s labels and
hang-tags, would be able to identify several trade-marks, specifically ING.
LORO PIANA & C., the crest design, and ING LORO PIANA & C and the crest
design. Further to this point, the Hearing Officer found that each of the first
two specified marks stood out sufficiently within the composite mark to have a
distinguishable identity. Third, 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 no explanation as to which wares related to the
specific product codes had been provided.
[10]
Based
on these findings, the Hearing Officer found that the evidence submitted
reflected sales of “textile fabrics” but, without an explanation as to which
wares relate to the remaining product codes, she was unable to conclude whether
there was evidence of sales with respect to the remaining registered wares.
[11]
I
agree with and adopt the Hearing Officer’s decision with regard to the ware
“textile 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:
|
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 the
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. In this second affidavit
Mr. Baldanza states that in addition to applying it trade-mark to “textile
fabrics” it has also applied it to “bed covers, blankets, scarves, mufflers,
shawls and gloves” which were sold to Canadian customers between August 4, 2004
and August 1, 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 the
exhibits. In support of these statements Mr. Baldanza included 7 invoices and
representative labels and hang tags as exhibits to the second affidavit.
[17]
The
Applicant submits that the second affidavit with accompanying exhibits,
combined with first affidavit that was before the Hearing Officer, confirm 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
the second affidavit, Mr. Baldanza also states that while the invoices do not
specifically refer to “mufflers” or “bed covers” or “blankets”, the company has
sold “stoles” and “throws” which it considers to be the same.
[19]
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
[20]
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.
[21]
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 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.
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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[22]
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).
[23]
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
[24]
Initially
the Applicant argued that the decision did not appear to have been rendered under
the appropriate authority. It was their position that the Hearing 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.
[25]
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
[26]
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.
[27]
I
note that the invoices of sales are dated within the relevant period and
provide evidence of sales of each registered ware made by the Applicant to
Canadian entities. Therefore, the Applicant provided evidence of sales in Canada during the
relevant period for the remaining wares. In drawing this conclusion I have
determined the sale of “stoles” to be “mufflers” and “bed covers” or “blankets”
to be “throws” (see Justice Hughes in Levi Strauss & Co., above, at
paragraphs 17-21).
C. Deviations
from the Registered Form of the Trade-Mark
[28]
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.
[29]
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.
[30]
The
labels and hang tags contain additional wording such as “FABRIC MADE IN ITALY”
and “Super 120’s”. I agree with the Hearing Officer 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 lettering.
[31]
I
also agree with the Hearing Officer that the typical consumer, upon viewing the
labels and hang tags, would be able to identify several trademarks, such as
ING. LORNO PIANA & C., the crest design, and ING. LORO PIANA & C and
crest design and that the first two of these marks stands out sufficiently
within the third composite mark to have an identity that is distinguishable from
the whole. Therefore, the trade-mark at issue in this matter, TMA 359, 462, is
distinguishable and stands out from the other words and marks.
[32]
The
labels and hang tags appear to use a variation of the trade-mark, using a
script format. It is clear that cautious variations can be made without adverse
consequences so long as the same dominant features of the mark are maintained
and the differences are not so unimportant as not to mislead an unaware
purchaser (see Promafil Canada Ltee v. Munsingwear Inc. (1992), 44
C.P.R. (3d) 59, [1992] F.C.J. No. 611 (F.C.A.)). In Honey Dew, Ltd. v. Rudd
et al, [1929] Ex.C.R. 83, 1 D.L.R. 449, Prothonotary Maclean expressed
concern over the practice of deviating from the precise form of a trade-mark as
registered. He continued to find the mark in that case, that deviated from the
registration with regard to the arrangement and form of the letters, was
acceptable as the mark was not substantially different and no one was deceived
and no injury could occur from the deviation.
[33]
In
this case, the script format is not substantially different from the mark as
registered as the same dominant features, the words comprising the trade-mark,
are maintained without addition or subtraction and the differences are
unimportant and would not mislead an unaware purchaser.
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 359, 462 is set aside;
2. trade-mark
registration No. TMA 359,462 will be maintained on the register without
amendment; and
3. no costs are
awarded.
“ D.
G. Near ”
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