Citation: 2018 TMOB 107

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
	TMA715,317 for TORRES SAN VALENTÍN & Design	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. TMA715,317 for the trade-mark TORRES SAN VALENTÍN & Design reproduced below (the Mark):

[2]  The Mark consists of an inverted tear drop containing, from top to bottom, the word TORRES in a band, a shield on which three towers are depicted, and the words SAN VALENTÍN.

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

[4]  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.

[5]  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.

[6]  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].

[7]  In response to the Registrar’s notice, the Owner furnished the affidavit of its Legal Representative, Antonio Pajares Acedo, sworn on December 9, 2016, in Spain. Only the Owner filed written representations; a hearing was not held.

The Owner’s Evidence

[8]  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 wine retailers directly and, through Canadian distributors, to provincial liquor control boards and other wine 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 vintner 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.

[9]  With respect to use of the Mark, Mr. Acedo provides annual Canadian sales figures for wine bearing the Mark for the years 2005 to 2013. In support, he attaches as Exhibit A to his affidavit over a dozen invoices dated between 2011 and 2013, three of which are from the relevant period. All of the invoices are from the Owner to various provincial liquor control boards and cover products that include one or both of the red wine “TORRES SAN VALENTIN - GARNACHA” and the white wine “TORRES SAN VALENTIN PARELLADA”.  Mr. Acedo confirms that the references to “TORRES SAN VALENTIN” pertain to goods bearing the Mark and that the invoices accompanied the products when they were sold to Canadian distributors.

[10]  Mr. Acedo also attaches, as Exhibit B to his affidavit, photographs of two bottles labelled with the Mark. He confirms that these photographs demonstrate how the Mark was used on products during the relevant period.

[11]  I note that, on each bottle, the label itself forms the Mark’s teardrop shape, and all of the Mark’s text and design elements appear within this outline. Additional text also appears within this outline, below the SAN VALENTÍN element. This additional text is largely illegible, but appears to start with “GARNACHA” and “PARELLADA” on each of the respective bottles.

Analysis

[12]  Mr. Acedo makes a clear assertion of use of the Mark in Canada in association with the registered goods. His assertion is supported by representative images of the Mark displayed on labels affixed to the goods and by invoices showing sales of such goods to provincial liquor control boards during the relevant period.

[13]  Although additional text fills the bottom half of the design on each label, in applying the principles set out by the Federal Court in Canada (Registrar of Trade Marks) v Cie International pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FCA) and Loro Piana SPA v Canadian Council of Professional Engineers (CCPE), 2009 FC 1096, 2009 CarswellNat 3400, I find that the Mark stands out from this additional matter. I am satisfied that, as a matter of first impression, the Mark per se is perceived, distinct from the smaller, added label text.

[14]  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

[15]  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