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| John McKeown |
The facts
D.M.C. SRL (DMC) is an Italian family business founded by Giuseppe De Giusti in 1975. DMC was initially an artisan coffee roaster. In 2008, DMC started selling sparkling wine from the province of Treviso, a renowned Prosecco region. DMC sells its Prosecco in Italy and other countries in association with various DE GIUSTI trademarks. It owns an Italian trademark registration for DE GIUSTI, registered in 2009, and filed Canadian trademark applications for DE GIUSTI design marks in 2020.
Jana Salnikova: ISTOCKPHOTO.COM
The opposition
Giusti filed a trademark application on Jan. 25, 2013, based on use of the GIUSTI PROSECCO trademark in Canada since Dec. 20, 2012. DMC opposed the application. The grounds of opposition included these grounds:
- GIUSTI PROSECCO was not registrable because it is primarily merely a surname.;
- Giusti was not entitled to register GIUSTI PROSECCO because (i) at all material times the trademark was likely to be confused with a number of DMC’s trademarks featuring DE GIUSTI, previously used or made known in Canada and elsewhere in association with goods including sparkling wine, and (ii) Mr. Giusti did not use the GIUSTI PROSECCO trademark in Canada because any use was by Società Agricola.
- GIUSTI PROSECCO was not adapted to distinguish and does not distinguish Giusti’s goods from the goods, services and businesses of others including DMC’s trademarks featuring the component DE GIUSTI, previously used or made known in Canada and elsewhere.
Decision of the Trademark Opposition Board
The board dismissed the opposition. First, the trademark GIUSTI PROSECCO includes Giusti’s surname and a type of wine and, in its entirety, is not primarily merely a surname contrary to paragraph 12(1)(a) of the Trademarks Act.
Second, the non-entitlement ground failed because DMC did not meet its evidential burden to show that one or more of its DE GIUSTI trademarks had been used or made known in Canada prior to Dec. 20, 2012. Further, the hearing officer found that Società Agricola’s use of the trademark inured to Giusti’s benefit.
Third, the non-distinctiveness ground failed because DMC did not meet its evidential burden to show that any of its DE GIUSTI trademarks had a sufficient reputation among Canadians to negate the distinctiveness of GIUSTI PROSECCO. An opponent cannot simply assert that their trademark is known in Canada, they must present clear evidence to that effect.
The appeal
DMC appealed and filed additional new evidence. The standard of review depended on the nature of the additional evidence. The court conducts a correctness review, in the nature of a de novo appeal, with respect to issues for which there is new evidence that would have affected the TMOB’s decision materially. If the evidence is not material, the regular standard of review applies.
In assessing whether new evidence would have materially affected the board’s decision, the court considers whether the evidence is “sufficiently substantial and significant” and of probative value. Unfortunately for DMC, the court found that the new evidence was not sufficiently substantial, significant and probative to justify a de novo review of any opposition ground.
Primarily merely a surname
The court found that DMC has not shown that the board committed a reviewable error in rejecting the paragraph 12(1)(a) ground of opposition. The board relied on existing Federal Court case law to find that GIUSTI PROSECCO, as a whole, is not primarily merely a surname. DMC has not pointed to any Canadian jurisprudence that stands for a contrary principle, and it did not establish that the board committed an error of law or a palpable and overriding error of fact or mixed fact and law in rejecting the paragraph 12(1)(a) ground of opposition based on the existing case law.
The court also dismissed an argument based on the assertion that a trademark combining a surname with a descriptive word lacks distinctiveness. Statements of opposition must set out the grounds of opposition in sufficient detail to enable the applicant to reply. DMC’s statement of opposition did not allege that GIUSTI PROSECCO lacked distinctiveness because it combines a surname with a descriptive word. There was no merit to DMC’s argument that this ground was implicit because inherent distinctiveness is a factor in assessing the likelihood of confusion.
Non-entitlement
DMC did not establish an error of law or a palpable and overriding error of fact or mixed fact and law in the board’s assessment of the non-entitlement ground of opposition. DMC’s new evidence was not material and did not justify a de novo review of the non-entitlement ground of opposition. DMC’s assertion that its Prosecco has been “made available to the Canadian market” was not supported by any evidence of Prosecco sales or evidence showing DMC’s Prosecco was offered for sale or distributed in Canada. DMC has not shown that its marketing materials were circulated in Canada or seen by Canadians.
Non-distinctiveness
DMC’s non-distinctiveness ground was based on an allegation that GIUSTI PROSECCO would be confused with DMC’s DE GIUSTI trademarks, which DMC alleged had been “extensively and continuously used or made known in Canada since well before the Jan. 25, 2013, filing date” of the application. The board did not err in rejecting this ground of opposition because DMC provided no evidence that any of its trademarks had acquired a reputation in Canada that would affect the distinctiveness of GIUSTI PROSECCO.
DMC’s new evidence did not remedy a deficiency in the evidentiary record that was before the board, and it would not have affected the TMOB’s finding that DMC did not meet its initial evidential burden in respect of the non-distinctiveness ground of opposition. There was no evidence that Canadians were familiar with DMC’s trademarks.
Comment
It seems relatively clear that to successfully assert an opposition based on non-entitlement or non-distinctiveness the opponent must be able to show that it has used the marks it relies on.
John McKeown, counsel at Goldman Sloan Nash & Haber LLP, is certified by the Law Society of Ontario as a specialist in intellectual property law (trademarks/copyright). He is the author of Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs. He can be reached at mckeown@gsnh.com.
The opinions expressed are those of the author and do not reflect the views of the author’s firm, its clients, Law360 Canada, LexisNexis Canada or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
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