Citation: 2018 TMOB 111

Date of Decision: 2018-09-28

IN THE MATTER OF A SECTION 45 PROCEEDING

	Barrette Legal Inc.	Requesting Party
and
	Miguel Torres, S.A.	Registered Owner
	TMA680,149 for TORRES 10	Registration

[1]  At the request of Barrette Legal Inc. (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act, RSC 1985, c T-13 (the Act) on May 13, 2016 to Miguel Torres, S.A. (the Owner), the registered owner of registration No. TMA680,149 for the trade-mark TORRES 10 (the Mark).

[2]  The Mark is registered for use in association with the goods “Brandy.”

[3]  The notice required the Owner to furnish evidence showing that the Mark was in use in Canada, in association with the goods specified in the registration, at any time between May 13, 2013 and May 13, 2016. If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last used and the reason for the absence of such use since that date.

[4]  The relevant definition of “use” in association with goods is set out in section 4(1) of the Act as follows:

4(1) A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.

[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. As such, the evidentiary threshold that the registered owner must meet is quite low [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448, 31 CPR (4th) 270].

[6]  In response to the Registrar’s notice, the Owner furnished the affidavit of its Legal Representative, Antonio Pajares Acedo, sworn on March 2, 2017, in Spain. Only the Owner filed written representations; a hearing was not held.

Preliminary Remarks

[7]  I note that the endorsements on the exhibits to the Acedo affidavit indicate that the exhibits were sworn to on March 17, 2017, which is after the date the affidavit itself was sworn. However, the Registrar generally accepts affidavits sworn in foreign jurisdictions as long as that jurisdiction’s requirements are met [see Dubuc v Montana (1991), 38 CPR (3d) 88 (TMOB)]. In this case, there is no indication that the Acedo affidavit does not meet Spanish requirements.

[8]  Moreover, it is well established that technical deficiencies in evidence should not stop a party from successfully responding to a section 45 notice [see Baume & Mercier SA v Brown (1985), 4 CPR (3d) 96 (FCTD)]. In particular, the Registrar has accepted exhibited evidence that is not properly endorsed where the exhibits are clearly identified and explained in the body of the affidavit [see, for example, Borden & Elliot v Raphaël Inc (2001), 16 CPR (4th) 96 (TMOB)]. Such is the case with the exhibits here. The registrar has also held that an improper endorsement on an exhibit will not necessarily render it inadmissible if, as here, no objection was raised by the other party [see Maximilian Fur Co, Inc v Maximillian for Men’s Apparel Ltd (1983), 82 CPR (2d) 146 (TMOB)].

[9]  In view of the foregoing, I find that the exhibits to the Acedo affidavit are admissible as evidence for the purposes of this proceeding.

The Owner’s Evidence

[10]  In his affidavit, Mr. Acedo states that the Owner is a wine-grower and wine and brandy producer and exporter. He states that the Owner sells its products in several Canadian provinces, to alcohol retailers directly and, through Canadian distributors, to provincial liquor control boards and other alcohol vendors who in turn sell to Canadian consumers. He names four “current Canadian distributors” of the Owner’s products, covering nine provinces and one territory.  Mr. Acedo confirms that this “commercial chain from producer to distributor to liquor control agency or board to consumers, hotels, restaurants and such (who then sell on to consumers)” is the Owner’s normal course of trade.

[11]  With respect to use of the Mark, Mr. Acedo provides annual Canadian sales figures for brandy bearing the Mark for the years 1993 to 2015. In support, he attaches as Exhibit A to his affidavit over two dozen invoices from the Owner to various provincial liquor control boards, dated between 2011 and 2016. More than half of the invoices are from the relevant period, and these list “TORRES - TORRES 10 IMPERIAL BRANDY” among the invoiced products.  Mr. Acedo confirms that the invoices accompanied the products when they were sold to Canadian distributors.

[12]  Mr. Acedo also attaches, as Exhibit B to his affidavit, three pages of label drawings that he describes as “label sample order sheets from the years 2013 and 2014”. The drawings consist of a front label, a back label, and a neck label, each prominently featuring the Mark. The front label identifies the product as “Imperial Brandy”.  Mr. Acedo confirms that the depicted labels appeared on goods sold by the Owner to Canadian customers.

[13]  Finally, as Exhibit C to his affidavit, Mr. Acedo attaches three samples of promotional magazines, published by the Owner in 2013, 2014, and 2015, respectively.  Mr. Acedo attests that such magazines would have been made available to end consumers in the various Canadian establishments that sell brandy branded with the Mark. He explains that the images contained in the magazines—which he also refers to as “catalogues”—demonstrate some of the ways in which the Mark is applied to products. Indeed, each magazine contains a page that depicts a bottle of “Torres 10 Gran Reserva” Spanish Gran Reserva brandy. The depicted bottles all display the Mark on labels similar to those depicted at Exhibit B.

Analysis

[14]  Mr. Acedo makes a clear assertion of use of the Mark in association with the registered goods in Canada during the relevant period. His assertion is supported by images of the Mark displayed on labelling for the goods and by invoices showing sales of such goods to provincial liquor control boards during the relevant period. Given the dates of the exhibited magazines and Mr. Acedo’s sworn statements regarding these publications, I accept that the images of “Torres 10 Gran Reserva” in the magazines are representative of the Mark’s display on labelling for the registered goods that were sold in Canada during the relevant period.

[15]  In view of the foregoing, I am satisfied that the Owner has demonstrated use of the Mark in association with the registered goods within the meaning of sections 4(1) and 45 of the Act.

Disposition

[16]  Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with section 45 of the Act, the registration will be maintained.

Oksana Osadchuk

Hearing Officer

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No Hearing Held

AGENTS OF RECORD

Aventum IP Law LLP	FOR THE REGISTERED OWNER
Barrette Legal Inc.	FOR THE REQUESTING PARTY