CUVÉE IMPERIALE BERLUCCHI saved from expungement

The Federal Court of Canada has reversed a decision of the registrar of trademark which had expunged the CUVÉE IMPERIALE BERLUCCHI trademark for sparkling wines.

The decision stems from an application to expunge the mark CUVÉE IMPERIALE BERLUCCHI held by Italian wine maker Guido Berlucchi & C Srl. Guido Berlucchi was required to furnish evidence of use of the mark between May 2000 and May 2003. The only evidence filed in that regard was an affidavit in which the affiant, a representative of Guido Berlucchi, stated that Guido Berlucchi had sold 300 bottles of sparkling wines to its Canadian exclusive agent in October 2001. Attached as exhibit to the affidavit was an invoice evidencing the sale of 300 bottles of what was described as "Cuvée Impériale Brut".

The registrar concluded that the evidence clearly showed the sale of sparkling wines within the relevant period. However, the registrar found the evidence to be ambiguous as to whether the registered trademark was itself used during that same period. As no label or photograph of a bottle with a label affixed to it was submitted, and as the invoice referred only to "Cuvée Impériale Brut" rather than the CUVÉE IMPERIALE BERLUCCHI trademark, the registrar was not contented that the registered trademark had been used. Accordingly, the registrar ordered that the mark be expunged.

In support of its appeal, Guido Berlucchi filed a new affidavit to which a sample of the label affixed to the bottles sold in 2001 was attached. Guido Berlucchi asked the court to set the registrar's decision aside and reinstate the registration in association with sparkling wines.

The main issue raised on appeal was whether the trademark used in 2001 by Guido Berlucchi and shown as an exhibit was so different from the registered trademark that such use could not have been considered as 'use' within the meaning of Section 4 of the Trademarks Act.

In its decision, the Federal Court had to examine the differences existing between the trademark registered and the mark used by Guido Berlucchi, and decide whether these differences were significant enough to conclude that the mark used by Guido Berlucchi did not constitute 'use' of the registered trademark.

In order to comply with Section 4, the dominant features of the registered trademark must subsist in the trademark as used in the market.

The court noted that there were some differences between the marks. The depiction of the wall and arches pictured at the top of the trademarks are not the same. Furthermore, the trademark used presents a leaf design around the word part of the mark that does not appear on the registered trademark and the word part itself is slightly different from the registered trademark.

Despite these differences, the court stated that they did not, either on their own or taken as a whole, constitute a significant modification that could mislead consumers. On the contrary, the court was of the opinion that the dominant impression and global visual impact of the two trademarks was generally the same. It further mentioned that consumers would instantly believe that each of the sparkling wine bottles emanated from the same source.

Accordingly, the court allowed the appeal and restored Guido Berlucchi's registration in association with sparkling wines.

Catherine Daigle, Léger Robic Richard LLP, Montreal