Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2015 TMOB 3

Date of Decision: 2015-01-12

IN THE MATTER OF A SECTION 45 PROCEEDING requested by Industria de Diseno Textil, S.A. against registration No. TMA395,023 for the trade-mark PASTA ZARA & DESIGN in the name of FFAUF S.A.

[1]               At the request of Industria de Diseno Textil, S.A. (the Requesting Party), the Registrar forwarded a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) on December 18, 2012 to FFAUF S.A. (the Registrant), the registered owner of registration No. TMA395,023 for the trade-mark PASTA ZARA & DESIGN (shown below) (the Mark):

[2]               The Mark is registered for use in association with: “Alimentary pasta” (the Goods).

[3]               The section 45 notice required the Registrant to show whether the Mark had been used in Canada in association with the Goods at any time between December 18, 2009 and December 18, 2012 (the relevant period). If the Mark had not been so used, the Registrant was required to provide the date when it was last in use and the reason for the absence of such use since that date.

[4]               The relevant definition of “use” in the present case is set out in subsection 4(1) of the Act as follows:

[5]               It is well established that the purpose and scope of section 45 of the Act is to provide a simple, summary and expeditious procedure for removing “deadwood” from the register and, as such, the evidentiary threshold that the registered owner must meet is quite low [see Uvex Toko Canada Ltd v Performance Apparel Corp (2004), 31 CPR (4th) 270 (FC)].

[6]               In response to the Registrar’s notice, the Registrant filed a copy of an undated document entitled “Affidavit of Massimo Storaro”, together with Exhibits “A” through “E-1” to “E-12”. I shall stress at this point that the copy of the “affidavit” bears the original signature of an unidentified person next to a handwritten correction made at paragraph 15.k. of the “affidavit”. I am reproducing below parts of the document showing the handwritten correction and corresponding signature, the signature page of the “affidavit”, and what apparently consists of a certification page:

[7]               Both parties filed written submissions and were represented at a hearing.

[8]               In its written submissions the Requesting Party objected to the admissibility of the Storaro document on the basis that it does not qualify as an affidavit since, among others:

-          at page 7, there is no signature of any person authorized to receive the oath (and furthermore, there is no date or place of signature and/or administration of the oath);

-          the signatory (other than Massimo Storaro) is not one of the persons named in the Canada Evidence Act [RSC 1985, c C-5] and, furthermore, does not even identify himself as such;

-          the form that follows the page of signature by the “affiant” is in Italian and not in English or in French; and

-          for those with minimal knowledge of Italian, this statement in Italian merely attests the identity of the signatory Massimo Storaro and not that he has been sworn.

[9]               At the outset of the hearing, I asked the agent for the Registrant if he had mistakenly retained the original copy of the Storaro document, as his covering letter addressed to the Registrar at the time of filing the Registrant’s evidence did not specify that the document consisted of a copy only. I am reproducing below the relevant part of his letter dated June 13, 2013 to the Registrar:

In response to the Section 45 Notice, […] we respectfully submit the Affidavit of Massimo Storaro with corresponding Exhibits A to E. Please note that a copy of the Affidavit and the corresponding Exhibits have been sent by email and courier to the Representative for Service for the Requesting party.

[10]           I also questioned the agent for the Registrant about the appearance of the original signature next to the handwritten correction reproduced above.

[11]           In response, the agent for the Registrant advised me that he received only an electronic copy of the Storaro document. He never received the original thereof. He further advised me that he is the one who made the handwritten correction and affixed his signature next to it. Upon learning of these facts, the Requesting Party submitted, in addition to the reasons listed above under paragraph 8, that the filing with the Registrar of a copy rather than the original of the Storaro document was by itself fatal to the Registrant.

[12]           I must therefore decide whether the Storaro document is admissible or not. If it is inadmissible, the subject registration will have to be expunged for lack of evidence of use of the Mark during the relevant period.

The admissibility of the Storaro document

[13]           Section 45 of the Act clearly requires that the proof of use be established by way of an affidavit or a statutory declaration. Accordingly, the evidence submitted must be in a form that is sworn or declared before a commissioner for taking oaths [see Motorcycle International, LLC v 680187 Ontario (Empire Tobacco Company) 2006 CanLII 80440 (TMOB) at p 2].

[14]           In the present case, the space reserved for the signature of the “Notary” or “Commissioner for Taking Oaths” on page 7 is blank, the certification page is in Italian only, and the seal affixed to each page of the “affidavit” and covering page of Exhibits A to E-12 is illegible. As such, it is not possible to ascertain to what extent Mr. Storaro’s statements were in fact made under oath and sworn to before an individual authorized to administer an oath.

[15]           While I accept that section 52 of the Canada Evidence Act does not exclude notaries from any foreign country [see Legault Joly v Akzo Nobel Coatings International B.V. (2002) 25 CPR (4th) 277 at 279 (TMOB); and Dubuc et al v Montana (1991) 38 CPR (3d) 88 (TMOB) at 91], even if I were to assume that the certification page was signed by Mr. Giuseppe Sicari as notary in Italy, the fact that he signed the document and affixed his seal thereto cannot in and of itself lead to the assumption that Mr. Storaro’s statements were sworn before him [see 88766 Canada Inc v 167407 Canada Inc (2010) TMOB 167 at para 13 (CanLII)]. It could be that Mr. Sicari’s certification merely attests the identity of the signatory Massimo Storaro and not that he has been sworn.

[16]           I find that these deficiencies are beyond mere technicalities that can be overlooked by the Registrar. Again, I shall stress that despite being alerted to the objection raised by the Requesting Party to the admissibility of the Storaro document, the Registrant elected to proceed on the basis that it is a properly sworn affidavit. The Registrant could have attempted to try and correct the situation. For example, had the Registrant provided a translation of the Italian portions of the document to indicate that Mr. Storaro’s statements were sworn or would have been considered the equivalent of an affidavit or statutory declaration in Italy, than this may have changed my decision. However, the Registrant provided no such translation and did not explain these ambiguities, aside from merely asserting that “the Storaro Affidavit was executed and sworn before, Giuseppe Sicari, a Notary in Italy, in the civil tradition, [who] subsequently notarized the affiant’s signature […]”. Absent such a translation, I consider at best the Storaro document the equivalent of a document furnished as evidence in a section 45 proceeding that has been stamped by a Canadian notary but which lacks a proper jurat [see, for example, Cameron IP v Jones (2013), 112 CPR (4th) 333 (TMOB)]. Consequently, I conclude that the Storaro document is inadmissible in this proceeding, without the need to consider the other deficiencies in the Storaro document noted by the Requesting Party.

[17]           As the Registrant has not complied with the requirements of section 45 of the Act, the evidence not being in the proper form of an affidavit or statutory declaration, then I conclude that this amounts to a failure to furnish evidence. Accordingly, the registration ought to be expunged.

[18]           Had the Storaro document been found admissible, I would have concluded that use of the Mark in association with the Goods had been shown during the relevant period for the reasons that follow.

The use of the Mark shown by the Storaro document

[19]           Contrary to the Requesting Party’s position, I would have been satisfied that use of the Mark by the Registrant’s exclusive worldwide licensee Pasta ZARA S.p.a. (Pasta Zara) enures to the benefit of the Registrant under section 50 of the Act. According to the English translation of the executed license entered into between the Registrant and Pasta Zara in 2010 attached under Exhibit A to the Storaro document, the Registrant “wishes to defend and promote the image of [its trade-marks, including the Mark] in the areas of current activity and future development”. The Registrant “reserves the right to approve all actions in advance and to make operational suggestions.” The license further provides that “the products licensed must maintain over time and present a high level of quality in terms of their raw materials, processing, packaging and commercialization”. Mr. Storaro further refers at paragraph 6 of his “affidavit” to article 3 of the license agreement, which requires the Registrant’s consent to outsource the production of ancillary products, while ensuring that pasta production occurs within Pasta Zara’s factories, as being “one manner in which [the Registrant] ensures control over the quality of goods produced by Pasta Zara”. As such, I agree with the Registrant that it is clear that in granting this license to Pasta Zara, the Registrant intended to maintain control over the character and quality of the goods under license (including the Goods) to Pasta Zara and did exercise such control.

[20]           I would have further been satisfied that it can be concluded from at least part of the invoices and shipping labels attached under Exhibit E that sales of alimentary pasta by the Registrant did occur in Canada during the relevant period. The invoices and shipping labels attached under Exhibits E-4, 6, 8, 9 and 11 all show sales of pasta products by the Registrant’s licensee, Pasta Zara, to Canadian distributors, who retail the goods to consumers.

[21]           Contrary to the Requesting Party’s position, I would have found the evidence sufficient to permit me to conclude that at the time of transfer of the Goods in the normal course of trade the Mark appeared on the packaging for such goods.

[22]           In this regard, I would have been satisfied that a correlation could be made between the descriptions on some of the packaging reproduced in the 2013 Pasta Zara products catalogue attached under Exhibit D and the descriptions appearing on the invoices and shipping labels attached under Exhibits E-4, 6, 8, 9 and 11. While this catalogue postdates the relevant period, I would have found it reasonable to infer that the examples of packaging displayed in it are representative of the ones used during the relevant period. Mr. Storaro explains that as shown in the catalogue, there are at least ten types of pasta products, all of which would be properly classified under the Goods, which use the Mark on their packaging. Mr. Storaro explains that the Goods imported into Canada have “the same packaging”. Mr. Storaro further specifies for each of these invoices the amount attributed to the Goods associated with the Mark. The weight in grams and packs per box indicated under the goods descriptions in the invoices and shipping documents, as well as the name of the products (e.g. MAGIE DI PASTA; LE FANTASIE, TRAFILATA IN BRONZO, etc.) match the ones displayed in the catalogue, although it is not possible to match the reference numbers for the pasta products identified in the invoices with the “Pack EAN CODE[s]” identified in the catalogue.

[23]           Furthermore, I would have been satisfied that use of the Mark as displayed on the examples of packaging reproduced below (table reproduced from the Requesting Party’s written submissions), amounts to use of the Mark as registered:

[24]           I would have found that the Mark displayed on such packaging does not substantially deviate from the Mark as depicted in the subject registration. The dominant features of the Mark, namely the design of a peasant woman holding sheaves of cereals and the words “pasta ZARA” displayed within an ellipse underneath have been preserved so that the Mark as used maintains its identity and remains recognizable as the registered Mark per se [see Registrar of Trade-marks v Compagnie Internationale pour l’Informatique CII Honeywell Bull (1985), 4 CPR (3d) 523 (FCA); and Promafil Canada Ltee v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA)].

[25]           Finally, in response to the Requesting Party’s position that the reference by Mr. Storaro to “the same packaging” would appear doubtful in Canada, since said packaging is neither in English, nor in French, I would have noted that compliance with statutes other than the Act is not a relevant consideration under section 45 of the Act [see Lewis Thomson & Sons Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)]. In any event, as noted by the Registrar in Aetna Life Insurance Company of Canada v SNJ Associates, inc, 2001 CanLII 38009: “Even if the representative packaging evidenced […] was not in compliance with the Consumer Packaging and Labelling Regulations, it may well be that the Canadian distributors affix additional labelling to the packaging in order to comply with Canadian law.”

Decision

[26]           In view of my earlier conclusion to the effect that the Registrant has failed to file evidence in the form of an affidavit or statutory declaration, which is tantamount to a failure to file evidence, I conclude that the registration ought to be expunged.

[27]           Pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be expunged in accordance with the provisions of section 45(5) of the Act.

_____________________________

Annie Robitaille

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office