IN THE MATTER OF AN OPPOSITION by Antonio Fusco International S.A. Lussemburgo, Succursale di Lugano to application No. 884179 for the trade-mark ENZO FUSCO filed by Fusco Vincenzo
On July 13, 1998, the applicant, Fusco Vincenzo, filed an application to register the trade-mark ENZO FUSCO. The application was based on proposed use of the mark in association with wares now identified as:
“clothing, namely dresses, suits, waistcoats, sports jackets, quilted jackets, coats, overcoats, raincoats, trousers, skirts, overalls, Bermuda shorts, shorts, shirts, T-shirts, pullovers, sweaters, ties, stockings, socks, leotards, belts, gloves, shawls, scarfs, foulards, parkas, bombers, underwear, skiwear namely trousers, overalls, anoraks, blazers, caps and gloves, sweaters, pullovers, plush pants, plush shorts, plush skirts, plush jackets, plush jerseys, plush shirts.”
The application was advertised for opposition purposes on June 14, 2000.
The opponent, Antonio Fusco International S.A. Lussemburgo, Succursale di Lugano, filed a statement of opposition on November 14, 2000, a copy of which was forwarded to the applicant on November 28, 2000. The applicant served and filed a counter statement on March 20, 2001. The opponent filed as its evidence the statutory declaration of Antonio Fusco and the affidavit of Dominico Scarfo. The applicant filed the affidavit of Eileen J. Castellano. As its evidence in reply, the opponent filed the affidavits of John D. Miller and Walter Fruh. Although orders for the cross-examinations of Mr. Miller and Mr. Fruh were obtained, cross-examinations were never conducted. Both parties filed a written argument. An oral hearing was conducted at which only the applicant was represented.
The first ground of opposition is that the application does not comply with subsection 30(i) of the Trade-marks Act, R.S.C. 1985, c. T-13 (“the Act”) in that the applicant cannot have been satisfied that he was entitled to use the trade-mark pursuant to s.30(i) in view that the proposed mark was confusing with the opponent’s mark ANTONIO FUSCO which the opponent has used in Canada. The second ground of opposition is that the applicant is not the person entitled to registration pursuant to Paragraph 16(3)(a) since at the date of filing, the applicant’s mark was confusing with the opponent’s mark ANTONIO FUSCO which had been previously used in Canada by the opponent in association with “pants, skirts, jackets, blouses, tailored suits and dresses, shirts, unlined jackets, knitted dresses, unlined coats, scarves, coats, belts.”
As its final ground of opposition, the opponent pleads that the proposed mark is not distinctive in that it is not adapted to distinguish the wares of the applicant from the wares of the opponent in association with which the opponent’s aforesaid trade-mark is and has been used in Canada.
Opponent’s Evidence
Statutory Declaration of Antonio Fusco
Mr. Fusco is the President and founder of Antonio Fusco S.p.A. (“Fusco S.p.A.”). He explains that the opponent is the Swiss branch of ANTONIO FUSCO INTERNATIONAL S.A. (“Fusco International”), a company which is wholly owned and controlled by Fusco S.p.A. Fusco Succursale is the Swiss branch of Fusco International, and is the owner of the majority of the FUSCO “family” of trade-marks including FUSCO (device), ANTONIO FUSCO, and FUSCOLLECTION (hereinafter referred to as FUSCO family of trade-marks).
Mr. Fusco goes on to describe the relationship between Fusco S.p.A. and FALBER S.r.L., as well as the relationship between FALBER S.r.l. and Mr. Vincenzo (Enzo) Fusco (the applicant), and submits various documents to corroborate his assertions. Between 1995 and 1997, Fusco S.p.A. and FALBER S.r.l. were in negotiations to grant FALBER S.r.l. the right to use the FUSCO (device) mark in Italy. Business relations broke off on November 26, 1997, when FALBER S.r.l. allegedly failed to pay Fusco S.p.A. royalties that had accrued. On December 17, 1997, FALBER S.r.l. allegedly entered into an agreement with Mr. Vincenzo (Enzo) Fusco to license FALBER S.r.l. the marks FUSCO, E FUSCO, & FUSCO, and FUSCO, of which he would later become the owner. On March 18, 1998, Mr. Vincenzo Fusco and FALBER S.r.l. formulated a trade-mark license agreement and design cooperation with which the right to use the trade-marks ENZO FUSCO and E FUSCO (device) was licensed to FALBER S.r.l. Mr. Fusco further declares that on March 9, 1998, Fusco S.p.A. brought a petition for a protective measure in order to stop FALBER S.r.l.’s use of a distinctive sign similar to the FUSCO family of trade-marks. The Court of Milan recognized that the conduct of FALBER S.r.l. and Mr. Vincenzo Fusco constituted an act of bad faith by way of two ordinances in 1999.
The applicant argued that many of the exhibits attached to Mr. Fusco’s affidavit were either irrelevant, as they did not regard the trade-marks at issue in Canada, or inadmissible because sworn translations of the documents were not provided. I agree with the applicant that the documents which were not translated are inadmissible. I note that most of the documents that were translated, however, had a certified translation of a sworn translator accompanying the documents. I therefore find that these documents are admissible. However, as few of these documents concern the marks at issue in Canada, I agree with the applicant that little weight should be given to this evidence in any case.
Scarfo Affidavit
Mr. Scarfo has been the Director of the opponent since 1999. He explains that Mr. Antonio Fusco is a worldwide famous fashion design whose collections have existed since at least as early as 1978 in Italy. Newspaper and magazine articles discussing Mr. Fusco and his designs are attached as Exhibit 1. The ANTONIO FUSCO mark is registered for use in association with clothing and accessories in at least 42 countries.
The opponent first began selling clothing and accessories bearing the ANTONIO FUSCO trade-marks in Canadian shops and boutiques in 1993. Worldwide sales figures for ANTONIO FUSCO marked goods for the years 1978-2000 were between 80 million and 35 billion lira. Although there is no breakdown provided for sales in Canada, Mr. Scarfo does state that sales in Canada began in 1993. A small sampling of invoices from some of the Canadian sales of these goods, through boutiques such as Chez Catherine in Toronto and Serge & Real, Couture in Westmount, Quebec are attached as Exhibit 11.
Mr. Scarfo goes on to state that the opponent extensively promotes and advertises its FUSCO family of marks by means of catalogues, billboards, magazines, newspapers and fashion shows. Examples of promotional materials are attached as Exhibit 8. The approximate amounts spent worldwide by ANTONIO FUSCO S.p.A. to promote clothing and accessories associated with the FUSCO marks between 1982 and 2000 ranged between 2 million and 3 billion lira. However, Mr. Scarfo did not provide a breakdown of those figures by country and they are therefore of little assistance in this case. Also attached to his affidavit were numerous examples of print advertisements that have appeared in various European and American consumer magazines. Mr. Scarfo states that some of the advertisements were in magazines that also circulate in Canada such as the Herald Tribune, the New York Times, Cosmopolitan and Vogue. Canadian circulation figures for these newspapers and magazines were not provided. Nevertheless, I can take judicial notice that American newspapers such as the Herald Tribune and the New York Times, and American published fashion magazines such as Cosmopolitan and Vogue do circulate in Canada (see Milliken & Co. v. Keystone Industries (1970) Ltd. (1986), 12 C.P.R. (3d) 166 (T.M.O.B.) at 168; Timberland Co. v. Wrangler Apparel Corp. 38 C.P.R. (4th) 178 (T.M.O.B.)). I am therefore able to conclude that there has been some limited circulation in Canada of advertisements featuring the opponent’s ANTONIO FUSCO mark prior to the material dates in this case (which will be discussed further below).
Applicant’s Evidence
Castellano Affidavit
Ms. Castellano, trade-mark searcher with Fetherstonaugh & Co., found over 162 listings in different telephone directories in Canada for the last name Fusco. She also found six listings for Anthony or Antonio Fusco in various cities across Canada. Attached as Exhibit 4 to her affidavit is a copy of the Trade-marks Office file for the opponent’s application no. 864,885 for the trade-mark ANTONIO FUSCO which was subsequently abandoned.
Opponent’s Reply Evidence
Miller Affidavit
Mr. Miller is a trade-mark agent and searcher for the opponent’s agents’ firm. He conducted a search of the Canadian Trade-marks Register, using the CD NAME Search System, for trade-marks which he states consist of fashion designers’ first and surnames. While I can take judicial notice that some of the names searched are well known fashion designers, there is no evidence that each of the names searched by Mr. Miller are those of fashion designers. In any case, I am satisfied that the results show that there are many registered trade-marks that consist of a fashion designer’s first and surname.
Fruh Affidavit
Mr. Fruh is a director of the firm Mark-Pat Modiano, which acts on behalf of the opponent. Mr. Fruh obtained from Dr. Ing Fuido Modiano, a European trade-mark attorney qualified to act before the Office for the Harmonization in the Internal Market (OHIM), certified copies and English translations of the OHIM decisions in the oppositions to the European trade-mark applications for ENZO FUSCO and E FUSCO. While Mr. Fruh states that the issues raised in those oppositions are identical to the issues raised in the opposition now before the Canadian Trade-marks Office, he provides no evidence of his expertise under Canadian Law. As he is not qualified to render the opinion he did, it will be disregarded. I would like to add that the decisions themselves are also of little relevance as they were decided under Italian law and there was no evidence provided stating that the law in Italy is similar to the law in Canada.
Grounds of Opposition
With respect to the first ground of opposition, presumably the opponent intended to allege that the applicant was aware of the opponent's mark ANTONIO FUSCO. However, even if the applicant had knowledge of the opponent's mark, that fact alone would not have precluded it from truthfully making the statement in its application required by subsection 30(i) of the Act. Thus, the first ground of opposition is unsuccessful.
As its second ground of opposition, the opponent alleged that the applicant is not the person entitled to registration of the trade-mark pursuant to Paragraph 16(3)(a) because at the date the applicant applied to register the proposed mark, it was confusing with the opponent’s mark ANTONIO FUSCO which had been previously used in Canada by the opponent in association with “pants, skirts, jackets, blouses, tailored suits and dresses, shirts, unlined jackets, knitted dresses, unlined coats, scarves, coats, belts.” The material date for determining the likelihood of confusion with respect to entitlement under Paragraph 16(3) is the filing date of the application, i.e. July 13, 1998. There is a legal burden on the applicant to establish, on a balance of probabilities, that there would be no reasonable likelihood of confusion between the marks in issue. However, the opponent has an initial burden on it to show that it had used ANTONIO FUSCO in Canada before July 13, 1998. In addition, subsections 16(5) and 17(1) of the Act place a burden on the opponent to establish non-abandonment of its mark as of the date of advertisement of the applicant’s application (i.e. June 14, 2000).
The applicant’s agent submits that the opponent has not met its burden under this ground. In this regard, the applicant’s agent refers to the fact that the evidence refers to the FUSCO “family of marks”, whereas the only mark relied upon by the opponent in this proceeding is the mark ANTONIO FUSCO. For example, in the statutory declaration of Antonio Fusco, reference is made to the first use of the “FUSCO family” of marks in 1993, and invoices of products sold in Canada bearing the “FUSCO trade-marks” were included as Exhibit 11 to the affidavit. The applicant’s agent further submits that there is no evidence that the mark ANTONIO FUSCO appeared on the wares identified in the invoices, or that the invoices accompanied the goods at the time of sale. Finally, the applicant’s agent submits that there is almost no evidence of any advertising of the opponent’s mark in Canada.
I agree with the applicant’s agent that the advertising samples are not sufficient to comply with s.4(1) of the Act. As for the invoices, the display of a trade-mark at the top of an invoice, as opposed to in the body of the invoice, is generally not considered to be use of the mark in association with the wares listed in the invoice. Even when the trade-mark appears in the body of the invoice, this is not evidence of use of the trade-mark in accordance with subsection 4(1) where there is no evidence that the invoice accompanied the wares (Riches, McKenzie & Hebert v. Pepper King Ltd. (2000), 8 C.P.R. (4th) 471 (F.C.T.D.)).
In view that the materials put forward to show use of the opponent’s mark do not show use in association with s. 4(1), the opponent has not met its onus with respect to its s.16 ground of opposition and the second ground therefore fails.
With respect to the non-distinctiveness ground, the material date for determining this ground is the date of opposition (i.e. November 14, 2000). In assessing whether the opponent has met its evidential burden, I am mindful of the fact that the opponent’s use of its mark need not necessarily qualify as trade-mark use within the scope of s.4(1) of the Act in order to be relied upon in challenging the distinctiveness of the applicant’s trade-mark (see Mutual Investco Inc. v. Knowledge is Power Inc. (2001), 14 C.P.R. (4th) 117 at 123 (TMOB) and Jalite Public Ltd. v. Lencina (2001), 19 C.P.R. (4th) 406 (TMOB)). As discussed earlier, part of the evidence provided by the opponent are 9 invoices from Antonio Fusco, spa in Milan to various Canadian companies, dated from March 24, 1993 to March 25, 1997. As discussed earlier, none of these invoices refer to ANTONIO FUSCO in the body of the invoices but they do all prominently display the ANTONIO FUSCO trade-mark at the top. In addition, the invoices refer to the sales of various pieces of the opponent’s clothing wares. This evidence, along with the evidence of advertising in Canada, satisfies the opponent’s evidential burden with respect to its non-distinctiveness ground of opposition.
The outcome of this ground therefore turns on whether the applicant has met its burden of showing that its mark ENZO FUSCO distinguished, or was capable of distinguishing the applicant’s applied for wares from the opponent’s wares.
The test for confusion is one of first impression and imperfect recollection. In applying the test for confusion set forth in subsection 6(2) of the Act, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in subsection 6(5) of the Act. Those factors specifically set out in subsection 6(5) are: the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.
The criteria outlined in subsection 6(5) of the Act need not be given equal weight. The weight to be given to each relevant factor may vary, depending on the circumstances (see Clorox Co. v. Sears Canada Inc. 41 C.P.R. (3d) 483 (F.C.T.D.); Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)).
Considering initially the inherent distinctiveness of the trade-marks at issue, both marks possess fairly low degrees of inherent distinctiveness as they would both be perceived as the name of a person. As for the extent to which the trade-marks at issue have become known, the applicant did not evidence any use of its mark and I must therefore conclude that it had not become known at all in Canada. While the opponent’s evidence may have been sufficient to establish that its mark was very well known in other areas in the world, from the evidence furnished I can only conclude that its mark has become known to some extent in Canada.
The length of time the marks have been in use, Paragraph 6(5)(b), favours the opponent. With respect to paragraphs 6(5)(c) and (d) of the Act, both parties’ wares comprise clothing. Consequently, the channels of trade associated with the respective wares of the parties either could or would overlap.
As for the degree of resemblance between the trade-marks in issue, both parties’ marks share the same second component, i.e. the word FUSCO. There is therefore some similarity in appearance and in sound between the marks. The ideas suggested are similar as well as both marks suggest the name of an individual.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Despite the able argument made by counsel for the applicant, in view of my conclusions above, and particularly in view that the parties’ wares are the same and their channels of trade would likely overlap, and the resemblance between the marks, I conclude that on a balance of probabilities there is a reasonable likelihood of confusion between the marks. I am therefore not satisfied that the applicant’s mark ENZO FUSCO distinguished, nor was capable of distinguishing the applicant’s applied for wares from the opponent’s ANTONIO FUSCO wares. This ground of opposition therefore succeeds.
Having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Act, I refuse the applicant’s application pursuant to subsection 38(8) of the Act.
DATED AT GATINEAU, QUEBEC, THIS 23rd DAY OF August, 2005.
C. R. Folz
Member,
Trade-Marks Opposition Board