Federal Court Decisions

 

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[1] of Trade-marks to expunge Guido Berlucchi & C. S.r.l.’s[2] (“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[3] 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.[4]

 

[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[5] 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. (4^th) 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. (4^th) 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) [6].

 

[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[7], 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.

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.

FEDERAL COURT

 

SOLICITORS OF RECORD

 

 

 

DOCKET:                                          T-710-06

 

STYLE OF CAUSE:                          GUIDO BERLUCCHI & C. S.r.l.

 

and

 

BROUILETTE KOSIE PRINCE

 

 

PLACE OF HEARING:                    MONTREAL

 

DATE OF HEARING:                      FEBRUARY 6, 2007

 

REASONS FOR JUDGMENT:       GAUTHIER J.

 

DATED:                                             MARCH 2, 2007

 

 

 

APPEARANCES:

 

Mr. Barry Gamache	FOR THE APPLICANT
Mr. Bruno Barrette Mr. Benoît Huart	FOR THE RESPONDENT

 

SOLICITORS OF RECORD:

 

Léger Robic Richard MONTRÉAL, QC	FOR THE APPLICANT
Stikeman Elliott MONTRÉAL, QC	FOR THE RESPONDENT