Unopposed Appeal From Trade-mark Hearing Officer On Use
Loro Piana S.P.A. v. Canadian Council of Professional Engineers, 2009 FC 1095 (Near, J.)
Loro Piana S.P.A. v. Canadian Council of Professional Engineers, 2009 FC 1096 (Near, J.)

Gary Partington and Coleen Morrison for the Applicant
Elizabeth G. Elliot for the Respondent but did not file a Notice of Appearance or participate

October 27, 2009

These were appeals from decisions of a hearing officer of the Trade-mark Opposition Board in a proceeding under Section 45 of the Trade-marks Act amending the registrations for the trade-marks ING. LORO PIANA & C and ING. LORO PIANA & C & Design.  Separate reasons were issued for the two marks but this summary contains elements of both sets of reasons.

At the request of the Respondent, the Canadian Council for Professional Engineers, the Register issued Notices under Section 45(1) of the Act requiring the Applicant, the registered owner of the marks, to provide evidence of use of the marks in Canada for the period January 2, 2004 to January 2, 2007.

In October 2007, the Applicant filed an affidavit with exhibits stating that the marks had been used in Canada during the relevant time period and attached photos showing the marks on wares and tags attached to wares. Neither party submitted written arguments or requested an oral hearing. At the prompting of the Respondent, the Hearing Officer issued the decision that the evidence only showed use in association with fabrics or textile fabrics, but not for the remaining wares, namely, “yarns and treads; clothing, namely jackets, coats, skirts, trousers, cloaks, mantles, overcoats and knitted vests, scarves, mufflers, shawls and gloves”. Without explanation as to which wares related to which product codes shown in the evidence, the Hearing Officer was unable to conclude that there was evidence of use for the remaining wares. As such, the remaining wares were deleted from the registration.

The Applicant appealed. The Respondent, however, did not file a Notice of Appearance and did not take part in the appeals.

On the appeals, the Applicant filed a further affidavit that confirmed the earlier affidavit, which the Applicant submitted showed use for all the wares in the registrations, except for “threads”. Because of this new evidence, Justice Near reviewed the decision de novo.

The Court also considered whether the trade-marks as used deviated from the registrations and determined that the marks adequately stood out from the words “Fabric made in Italy” on the label and, as such, the additional words would not be perceived as forming part of the trade-marks. In addition, the script used on the label only deviated slightly from that used in the design mark registration.

The Court allowed the appeals and maintained the registrations without “threads”.

By: Alan Macek, Dimock Stratton LLP