Date: 20030731
Docket: T-465-02
Citation: 2003 FC 939
OTTAWA, ONTARIO, THIS 31st DAY OF JULY, 2003
Present: THE HONOURABLE MR. JUSTICE LUC MARTINEAU
BETWEEN:
BACARDI & COMPANY LIMITED
Applicant
and
HAVANA CLUB HOLDING S.A.
Respondent
REASONS FOR ORDER AND ORDER
[1] This is an appeal from a decision by the Registrar of Trade-marks (the Registrar) dated January 18, 2002, rejecting the opposition by the applicant, Bacardi & Company Limited, to the application of the respondent, Havana Club Holding S.A., for registration of the mark HAVANA CLUB ANEJO RESERVA & Design (the new mark), based on its proposed use in Canada, in association with rum.
[2] In this case, the Registrar concluded at page 8 of his decision:
[TRANSLATION] The first and fourth grounds of opposition, alleging non-use and non-distinctiveness of the applied for mark HAVANA CLUB ANEJO RESERVA & Design, have not been supported by evidence and are therefore rejected. As regards the remaining grounds of opposition, the critical issue is whether this Board has jurisdiction to effectively disregard the trade-marks register without actually amending the register. As I have indicated above, I do not believe that this Board has jurisdiction to do so. Accordingly, the second and third grounds of opposition are rejected.
[3] This case is basically identical to another appeal that was heard at the same time, on May 26, 2003, and which was dismissed by this Court (Bacardi & Company Limited v. Havana Club Holding S.A., 2003 FC 938, July 31st, 2003). That case was an appeal from a decision of the Registrar dated May 3, 2001, regarding an opposition between the same parties to the registration of the mark HAVANA CLUB Design (Application No. 843,949). The submissions, the evidence, the issues and the legal arguments are essentially the same in both cases with one exception: as the first ground of opposition, the applicant contended here that the requirements of paragraph 30(e) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) have not been complied with because the respondent does not intend to use the new mark in Canada, in connection with rum. Nonetheless, I note that on this appeal the applicant is not challenging the validity of the Registrar's decision to reject the first ground of opposition. Accordingly, the reasoning and the reasons for the preceding decision of this Court dismissing the first appeal also apply to this case.
[4] Therefore, upon reviewing the evidence, the Registrar could reasonably conclude that the respondent's application conformed to the requirements of the Act, that the new mark was registrable, that the respondent was the person entitled to registration of the mark and that the new mark was distinctive. In addition, the Registrar's decision to reject the applicant's opposition is not, in my view, unreasonable nor wrong in law.
ORDER
THE COURT ORDERS that the appeal filed by the applicant from the decision of the Registrar dated January 18, 2002, rejecting the applicant's opposition to the registration of the mark HAVANA CLUB ANEJO RESERVA & Design (Application No. 871,954), is dismissed with costs.
__________________________________
Judge
Certified true translation
Mary Jo Egan, LLB
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-465-02
STYLE OF CAUSE: BICARDI & CO. LTD. v. HAVANA CLUB HOLDING S.A.
PLACE OF HEARING: OTTAWA, ONTARIO
DATE OF HEARING: MAY 26, 2003
REASONS FOR ORDER
AND ORDER: THE HONOURABLE MR. JUSTICE MARTINEAU
APPEARANCES:
MR. ROBERT MacDONALD
MS. MONIQUE COUTURE FOR THE APPLICANT
MR. BARRY GAMACHE FOR THE RESPONDENT
SOLICITORS OF RECORD:
GOWLING, LAFLEUR, HENDERSON FOR THE APPLICANT
OTTAWA, ONTARIO
MORRIS ROSENBERG FOR THE RESPONDENT
DEPUTY ATTORNEY GENERAL OF CANADA