Date: 20040607
Docket: T-1622-03
Citation: 2004 FC 812
Ottawa, Ontario, June 7, 2004
Present: The Honourable Madam Justice Danièle Tremblay-Lamer
BETWEEN:
BROUILLETTE KOSIE PRINCE
Applicant
and
ANDRÉS WINES LTD.
Respondent
REASONS FOR ORDER AND ORDER
[1] This is an appeal from a decision by the Registrar of Trade-marks (the Registrar) confirming the registration of the trade-mark "IN VINO VERITAS" bearing registration number TMA 202,357.
[2] On November 16, 2000, at the written request of the applicant, the Registrar issued a notice to the respondent in accordance with section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the TMA), regarding the registration of the trade-mark "IN VINO VERITAS".
[3] On July 4, 2003, the Registrar decided to maintain the registration of the mark. Although he agreed that the words "IN VINO VERITAS" would be perceived as being part of the coat of arms appearing on the owner's labels, the Registrar was of the opinion that, as a first impression, the words "IN VINO VERITAS" would probably be perceived as a distinct trade-mark. In this respect, since the words "IN VINO VERITAS" appeared on the scroll of the owner's coat of arms, he believed that they would attract the attention of the public and would likely be considered by the public as a slogan or a motto used by the owner in association with its wines, which is used as a trade-mark.
[4] The applicant submits that the Registrar erred in fact and in law in finding that the respondent had proved the use of the trade-mark in this case and that he erred in fact and in law in applying the test developed in Nightingale Interloc Ltd. v. Prodesign (1984), 2 C.P.R. (3d) 535 (Hearing officer).
ANALYSIS
[5] Decisions by the Registrar must be reviewed under the reasonableness simpliciter standard when no additional evidence is filed on appeal (Molson Breweries, A Partnership v. John Labatt Ltd. (2000), 5 C.P.R. (4th) 180 (F.C.A.)).
[6] In Law Society of New Brunswick v. Ryan, [2003] 1 S.C.R. 247, the Supreme Court of Canada describes an unreasonable decision as follows:
[55] A decision will be unreasonable only if there is no line of analysis within the given reasons that could reasonably lead the tribunal from the evidence before it to the conclusion at which it arrived. If any of the reasons that are sufficient to support the conclusion are tenable in the sense that they can stand up to a somewhat probing examination, then the decision will not be unreasonable and a reviewing court must not interfere (see Southam, at para. 56). This means that a decision may satisfy the reasonableness standard if it is supported by a tenable explanation even if this explanation is not one that the reviewing court finds compelling (see Southam, at para. 79).
[7] The relief created by section 45 of the TMA provides for a summary and expeditious procedure enabling a registered trade-mark to be amended or expunged when the owner of the registered trade-mark does not use it.
[8] Section 45 of the TMA is not a substitute for the proceedings under section 57 of the TMA. It is rather a tool to rid the register of trade-mark registrations which are no longer in use. The complex questions of law relating to confusion, distinctiveness, ownership or abandonment of a trade-mark are beyond the scope of section 45 of the TMA.
[9] A party seeking to expunge a trade-mark through the recourse under section 45 of the TMA is therefore limited to arguments of non-use of the mark. More technical arguments are inappropriate given the summary nature of this recourse.
[10] The applicant submits that the respondent has not established that it was using the mark. The mark in question is always presented in combination with additional materials and the public cannot on first impression perceive that the mark is used as a distinct trade-mark. This is my opinion.
[11] In fact, the affidavit of Mr. Patchet clearly indicates that the mark in question is always used in combination with the applicant's coat of arms. In this case, the use of a trade-mark in combination with additional materials can amount to use of the mark if the public, as a matter of first impression, would perceive the mark per se as being used as a trade mark (Nightingale Interloc Ltd., supra).
[12] In applying this principle, the Registrar properly referred to the decision of the Federal Court of Appeal in Registrar of trade-marks v. Compagnie internationale pour l'informatique CII Honeywell Bull, société anonyme et al. (1985), 4 C.P.R. (3d) 523.
[13] In that matter, the Court decided that the use of the composite mark "CII HONEYWELL BULL" was not a use of the registered trade-mark "BULL". On this point, Pratte J.A. stated at page 4:
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.
[14] However, in my opinion the Registrar erred in applying the test in Honeywell Bull, supra. The test requires that the Registrar compare the mark as it is registered with the mark as it is used. The Registrar did not make this analysis.
[15] The registered trade-mark is only made up of the word "IN VINO VERITAS". It is not accompanied by any decorative material.
[16] The use of the mark is very different. It always appears on the scroll of the respondent's coat of arms and is indistinguishable from the coat of arms. Further, it is not possible de visu to detach the words from the coat of arms. The mark appears in small caps in the middle of a design which is decorative - not descriptive - and much larger than the mark.
[17] Here I reproduce a typical example of the mark as it appears on labels:
design
[18] I must find that the differences between the mark as it is registered and the mark as it is used are so significant that it was unreasonable for the Registrar to infer that a consumer as a matter of first impression, would perceive the mark as distinct.
[19] I therefore consider that the respondent has not established its use of the registered mark. The Registrar's errors in fact and in law open his decision to review. The appeal is allowed.
[20] The decision by the Registrar dated July 4, 2003, is set aside. The Registrar is ordered to expunge the registration of the trade-mark "IN VINO VERITAS" bearing registration number TMA 202, 357. With costs.
ORDER
THE COURT ORDERS that the decision by the Registrar dated July 4, 2003, be set aside. The Registrar is ordered to expunge the registration of the trade-mark "IN VINO VERITAS" bearing registration number TMA 202, 357. With costs.
"Danièle Tremblay-Lamer"
Judge
Certified true translation
Kelley A. Harvey, BA, BCL, LLB
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-1622-03
STYLE OF CAUSE: Brouillette Kosie Prince
v.
Andrés Wines Ltd.
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: May 26, 2004
REASONS FOR ORDER
AND ORDER: Madam Justice Danièle Tremblay-Lamer
DATE OF REASONS: June 7, 2004
APPEARANCES:
Bruno Barette For the applicant
Mitchell B. Charness For the respondent
SOLICITORS OF RECORD:
Brouillette Charpentier Fortin
1100 René-Lévesque Blvd. W.
Montréal, Quebec For the applicant
Ridout & Maybee LLP
150 Metcalfe St.
Ottawa, Ontario For the respondent