Partial victories for the Canadian Council of Professional Engineers
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The Trademarks Opposition Board has issued twin decisions in two proceedings under Section 45 of the Trademarks Act involving the trademarks ING. LORO PIANA & C. (and design) (Registration TMA 444,121) and ING. LORO PIANA & C. (Registration TMA 359,462) (December 11 2008). Both registrations are owned by the world’s foremost processor of cashmere and ultra-fine wools, Italian company Loro Piana SpA.
Under Section 45 of the act, a requesting party may petition the registrar to call upon the owner of a registered trademark to prove use of its mark in Canada at some point during the preceding three years. The trademark owner must show use in the normal course of trade in association with each of the goods and services covered by the registration. If the trademark owner fails to prove use or cannot put forward special circumstances excusing its non-use of the trademark, the registration - or certain goods or services covered by it - is subject to expungement.
The trademark ING. LORO PIANA & C. (and design) was registered in relation to “yarns and threads; fabrics; clothing, namely jackets, coats, skirts, trousers, cloaks, mantles, overcoats and knitted vests, scarves, mufflers, shawls and gloves”. ING. LORO PIANA & C. was registered in relation to “textile fabrics, bed covers, blankets, scarves, mufflers, shawls and gloves”.
In both proceedings, the requesting party was the Canadian Council of Professional Engineers (CCPE), an organization that has recently embarked on a mission to 'purge' the Trademarks Register (and to prevent any new registrations) of any marks that contain the term 'eng' (or its French equivalent 'ing'). CCPE already owns two official marks in Canada: P.ENG. (abbreviation for 'professional engineer') and ING. (abbreviation for the French equivalent 'ingénieur'). Only the individual members of provincial associations of CCPE can use these marks before or after their names.
In Canada, official marks include any mark protected under Section 9(1)(n)(iii) of the act - that is, any badge, crest, emblem or mark adopted and used by any public authority in Canada as an official mark for goods or services.
In both proceedings, Loro Piana provided affidavits attesting that the marks had been used within the last three years in association with the respective goods, and provided the following evidence:
- a representative sample of a label affixed to the goods;
- a promotional brochure showing the trademarks;
- invoices for sales by Loro Piana of the goods within the previous three years; and
- an index showing the specific labels applied to the various goods as listed in the invoices under the heading 'Articolo Cloth NR'.
The board found no evidence that the promotional brochure was distributed during the relevant period, but accepted that the invoices, although difficult to interpret, reflected the sales of “fabric” and “textile fabrics”. Without any explanation from Loro Piana as to which goods related to the remaining product codes on the invoices, the board concluded that there was no evidence of sales with respect to the remaining registered goods within the relevant three years, and no evidence of any special circumstances excusing the absence of use.
CCPE thus won a partial victory, as the board ordered that:
- the registration for ING. LORO PIANA & C. (and design) be amended to delete all goods except "fabrics"; and
- the registration for ING. LORO PIANA & C. be amended to delete all goods except “textile fabrics”.
Both decisions have been promptly appealed by Loro Piana to the Federal Court of Canada.
The decisions illustrate the danger of not adducing sufficiently detailed evidence as to the use of a mark in association with the goods covered by registration in the normal course of trade.
Gordon J Zimmerman and Daniel Brinza, Borden Ladner Gervais LLP, Toronto
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