SECTION 45 PROCEEDINGS
TRADE-MARK: BARBERA & Design
REGISTRATION NO.: 428,531
On January 5, 2005, at the request of Perley-Robertson, Hill & McDougall LLP, the Registrar forwarded the notice prescribed under Section 45 of the Trade-marks Act to Barbera Caffè S.p.A., the registered owner of the above-referenced trade-mark registration.
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The trade-mark BARBERA & Design (shown below) is registered for use in association with the following wares: “coffee”.
Section 45 of the Trade-marks Act requires the registered owner of the trade-mark to show whether the trade-mark has been used in Canada in association with each of the wares and/or services listed on the registration at any time within the three-year period immediately preceding the date of the notice, and if not, the date when it was last in use and the reason for the absence of use since that date. The relevant period in this case is any time between January 5, 2002 and January 5, 2005.
In response to the notice the affidavit of Enrico Barbera together with exhibits has been furnished. Each party filed a written argument. An oral hearing has not been requested in this case.
Mr. Barbera is the Chief Executive Officer and Managing Director for the registered owner. He states that his company is a family owned business founded in 1870 and engaged in the processing and sale of coffee.
He specifies that his company processes, packages and distributes coffee in association with the trade-mark, that the coffee products are processed at its plant in Arzano (NA) Italy and as Exhibit A he attaches a copy of a plan of his company’s processing plant. As Exhibit B he provides a Coffee Production Flowchart showing his company’s process in processing its coffee products from receipt of imported green coffee beans to packing for shipping or interim storage in the company’s warehouse. He specifies that the registrant’s packaged coffee products bearing the trade-mark are distributed internationally, including in Canada, through authorized importers and distributors. In Canada the main distributor is MGI Holdings Ltd. of Surrey, B.C. As Exhibit C he provides a business card of MGI Holdings Ltd.
He confirms that his company has been selling the wares in Canada through its distributors and importers during the relevant period and he encloses as Exhibit D representative packaging for the coffee products sold in Canada in association with the trade-mark. As Exhibit E he provides photocopies of representative importing bills of entry reflecting shipments of his company’s coffee products in Canada in the year 2003. As Exhibit F he submits representative invoices showing actual sales of the coffee products bearing the trade-mark to its Canadian distributors MGI Holdings Ltd. and Samora’s in the years 2001 and 2003.
The requesting party has raised several arguments, the main one being that it cannot be determined from the evidence that during the critical three-year period immediately preceding January 5, 2005, the registered wares namely “coffee” were sold in Canada in association with the trade-mark, particularly in the type of packaging furnished as Exhibit D, that is in 1000g or 1 KG bags of coffee bearing the trade-mark.
Having considered the evidence, I am satisfied that it shows that the registrant sold its coffee in Canada during the relevant period. In my view, the references on the invoices to “Miscela Mago Barbera”, “Miscela Classica Barbera” and “Miscela Hesperia Barbera” are references to the registrant’s coffee. In this regard, I rely on the information appearing on the packaging for the coffee (Exhibit D) which clearly show that the words “Mago”, “Classica” and “Hesperia” refer to different blends of coffee associated with the trade-mark. As two of the invoices bear dates during the relevant period and show sales to the registrant’s distributor MGI Holdings Ltd., this satisfies me that the registrant sold its “coffee” in Canada in the normal course of trade during the relevant period.
The issue is whether at the time of transfer the coffee was associated with the trade-mark in a manner satisfying the requirements of s-s. 4(1) of the Act.
The requesting party submits that as the invoices specify unit weights in the following amounts “27, 34, 48 and 72 KG”, it is apparent that the coffee was sold in bulk form and therefore in a packaging which must be different from the 1 KG packaging furnished as Exhibit D. It points to other items listed in the invoices (namely ashtrays, plastic trays, plastic cups), and submits that it appears MGI Holdings may be involved in the operation of a coffee shop or bar, and that this further supports its argument that the coffee shipped to MGI Holdings was sold in bulk and not in the 1 KG packaging furnished as Exhibit D which bear the trade-mark.
Contrary to the requesting party’s conclusion, I find that a fair reading of the invoices indicates that 27, 34, 48 and 72 units (i.e. 1 KG bags of coffee) were shipped to the registrant’s distributor during the relevant period. I would add that the invoices must not be taken in isolation but must be considered with the statements made in the affidavit, that coffee bearing the trade-mark was sold in Canada during the relevant period and that the packaging furnished as Exhibit D is “representative packaging” for the coffee sold in Canada. Consequently, having regard to the evidence as a whole, I find it can be concluded that the coffee was sold in the type of bags furnished as Exhibit D which clearly bear the trade-mark.
As for the fact that MGI Holdings Ltd. may be involved in the operation of a coffee shop or bar, in my view, this in itself, is not evidence that the coffee was sold in bags different from the bags furnished as Exhibit D.
As I have concluded that use of the trade-mark in Canada in association with the registered wares during the relevant period in a manner complying with the requirements of the Act has been shown, I conclude that the trade-mark registration ought to be maintained.
Registration No. 428,531 will be maintained in compliance with the provisions of Section 45(5) of the Act.
DATED AT GATINEAU, QUEBEC, THIS 12TH DAY OF APRIL 2007.
D. Savard
Senior Hearing Officer
Section 45 Division