LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2015 TMOB 189
Date of Decision: 2015-10-26
IN THE MATTER OF AN OPPOSITION
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4072430 Canada Inc.
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Opponent |
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Roberto Cavalli S.p.A. |
Applicant |
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1,472,409 for CAVALLI |
Application |
I Introduction
[1] 4072430 Canada Inc. (the Opponent) opposes registration of the trade-mark CAVALLI (the Mark) applied for registration by Roberto Cavalli S.p.A. (the Applicant) in association with a variety of services including various education services, entertainment services, sporting and cultural activities and temporary accommodation services.
[2] The determinative issue in this proceeding is whether, as of the filing date of the application, the Mark was confusing with the Opponent’s trade-mark CAVALLI alleged to have been previously used in Canada in association with restaurant, bar and catering services.
[3] For the reasons that follow, I find that the opposition ought to be rejected.
II The Record
[4] The application bearing serial No. 1,472,409 was filed on March 9, 2010 by the Applicant, then known as Erreci S.R.L.
[5] The application is based on registration and use of the Mark in Italy and proposed use of the Mark in Canada. The full statement of services of the application of record, as amended on June 3, 2014, reads:
(1) education services, namely conducting classes, seminars, conferences and workshops in the field of fashion and interior design; providing of training in the field of fashion and interior design; entertainment in the form of beauty pageants, fashion shows, television broadcasts in the field of fashion, fashion modeling for entertainment purposes, television news shows, live radio personality performances, presenting live musical performance, live performances by a musical band, live music concerts providing an informational and entertainment website in the fields of celebrity gossip, entertainment, fashions, sport and fitness; sporting and cultural activities, namely organisation of fashion exhibitions for cultural, sporting and educational purposes; organisation and production of fashion shows; temporary accommodation services, namely, hotels, motels, boarding houses, guest houses and tourist homes.
[6] The application was advertised in the January 30, 2013 issue of the Trade-marks Journal.
[7] The statement of opposition was filed on March 26, 2013. It raises several grounds of opposition under section 38 of the Trade-marks Act, RCS 1985, c T‑13 (the Act) that I have summarized in Schedule A to this decision. Generally speaking, the grounds of opposition are premised on allegations that the application does not comply with the requirements of section 30 of the Act; the Applicant is not the person entitled to registration of the Mark; and the Mark is not distinctive of the Applicant’s services.
[8] The Applicant filed a counter statement on June 14, 2013.
[9] In support of its opposition, the Opponent filed an affidavit of Giorgio Damiani, solemnly declared on October 11, 2013, including its Exhibits GD‑1 to GD‑7. Mr. Damiani was cross‑examined; the cross-examination transcript and reply to undertakings are of record.
[10] In support of its application, the Applicant filed an affidavit of Gay J. Owens, sworn on August 20, 2014, including its Exhibit “A”. Ms. Owens was not cross-examined.
[11] Only the Applicant filed a written argument.
[12] A hearing was not held.
III Onus and Material Dates
[13] The legal onus is on the Applicant to show that the application does not contravene the provisions of the Act as alleged in the statement of opposition. This means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the Applicant. However, there is also an evidential burden on the Opponent to prove the facts inherent to its pleadings. The presence of an evidential burden on the Opponent means that in order for a ground of opposition to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that ground of opposition exist [see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); Dion Neckwear Ltd v Christian Dior, SA et al, 2002 FCA 29, 20 CPR (4th) 155; and Wrangler Apparel Corp v The Timberland Company, 2005 FC 722, 41 CPR (4th) 223].
[14] The material dates that apply to the grounds of opposition are as follows:
• sections 38(2)(a)/30 of the Act ‑ the filing date of the application [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB)];
• sections 38(2)(c)/16(2)(a) and 16(2)(c) of the Act – the filing date of the application;
• sections 38(2)(c)/16(3)(a) and 16(3)(c) of the Act – the filing date of the application; and
• sections 38(2)(d)/2 of the Act– the filing date of the statement of opposition [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, 2004 FC 1185, 34 CPR (4th) 317].
IV Overview of the Evidence
IV.1 Opponent’s Evidence
[15] In considering the evidence, I will disregard any statements of Mr. Damiani amounting to an opinion on a question of fact and law to be determined by the Registrar. Also, because the Applicant did not make any representations with respect to the cross-examination of Mr. Damiani, I will refer to it only to the extent that it is relevant to my summary of his written testimony.
[16] I start my review of the affidavit by noting that Mr. Damiani references the “provision of food and drink, namely catering, restaurant, cafes, cafeterias, bar and cocktail lounge services” as part of the services covered by the application for the Mark [para 3]. Although these services were included in the application at the time of the affidavit, i.e. October 11, 2013, they were deleted in the amended application filed on June 3, 2014.
[17] Mr. Damiani is the President of the Opponent. He is also the President of Montréal Gourmet Holdings Inc. (Montréal Gourmet) [para 1]. Since its constitution in 2010, Montréal Gourmet has been the Opponent’s licensee for the marketing, promotion, and advertising of the trade-mark CAVALLI in association with restaurant, bar and catering services [para 6 as corrected in cross-examination, pages 4‑5 of the transcript]. A copy of the License Agreement was provided in reply to an undertaking [Q22].
[18] At this juncture, I note that Mr. Damiani references the use and promotion of the Opponent’s trade-mark CAVALLI throughout his affidavit. He does not make any references to the use or promotion of either the trade-name CAVALLI or RESTAURANT CAVALLI.
[19] I summarize as follows the testimony of Mr. Damiani with respect to the use and promotion of the Opponent’s trade-mark CAVALLI:
• the Opponent has operated the restaurant CAVALLI, located in downtown Montreal, since June 2003. The restaurant also offers bar and catering services [para 5 as corrected in cross-examination, page 4 of the transcript];
• since at least 2005, the Opponent’s annual sales figures for the services performed under the trade-mark have never been less than $4.5 million [para 8]; and
• since at least 2005, the Opponent’s annual average expenditures for the promotion and advertising of the restaurant, bar and catering services associated with the trade-mark have never been less than $100,000 [para 9].
[20] In summary, the documentary evidence provided by Mr. Damiani is described as:
• a sampling of excerpts from the Opponent’s website www.ristorantecavalli.com operated since at least as early as June 2003 [para 5, as corrected on cross-examination, and Exhibit GD‑1];
• two corporate kits distributed in Montreal and surroundings since 2007 and 2011 respectively [para 7 and Exhibit GD‑2];
• a sampling of advertising materials distributed in Montreal and surroundings between 2006 and 2012 [Exhibit GD‑3]; a sampling of “eflyers” distributed by email in Montreal and surroundings between 2005 and 2012 [Exhibit GD‑4]. These are said to be typical advertisements for special events held at CAVALLI [para 10];
• a sampling of articles referring to the Opponent’s CAVALLI restaurant, bar and catering services [Exhibit GD‑5]. These are said to have been published between 2004 and 2008 in Canadian newspapers and other publications distributed and available in Canada [para 11]; and
• a sampling of press releases published by the Opponent in 2004 and 2006. [Exhibit GD-6]. These are said to be representative of press releases regularly distributed, mainly by mass email, in Montreal and surroundings. At the date of the affidavit, the Opponent’s database had over 25,000 email addresses for the distribution of press releases [para 12].
[21] Mr. Damiani concludes his affidavit by stating that the Applicant operates a website, at www.cavallicaffe.com, to advertise and promote its services in the food and drink industry. He files a sampling of excerpts printed from this website and a printout from the website www.webnames.ca to show the details of the Applicant’s domain name “cavallicaffe.com” [para 15 and Exhibit GD‑7 of the affidavit]. Since the Opponent has chosen not to make representations in this proceeding, there is no indication of what it is trying to establish with the evidence purportedly relating to the Applicant’s website.
IV.2 Applicant’s Evidence
[22] Ms. Owens is a trade-mark searcher employed by the Applicant’s agent [para 1].
[23] Ms. Owens provides evidence of Canadian registrations owned by the Applicant for trade-marks incorporating the term CAVALLI [para 3 and Exhibit “A”]. These trade-marks are: C‑JUST CAVALLI Design (TMA583,018; TMA584,203; TMA619,713), CAVALLI (TMA802,156), JUSTCAVALLI Design (TMA854,953), ROBERTO CAVALLI Design (TMA550,219; TMA578,189; TMA545,888; TMA582,880) and ROBERTO CAVALLI SERPENTINE Design (TMA680,300).
[24] I note that this evidence does not assist the Applicant in this proceeding. Suffice it to say that ownership of registrations does not give a party the automatic right to obtain further registrations for that trade-mark or its component [see Groupe Lavo Inc v Procter & Gamble Inc (1990), 32 CPR (3d) 533 (TMOB) at 538].
V Grounds of Opposition Summarily Dismissed
[25] Since the Opponent has chosen not to make representations in this proceeding, I summarily dismiss each and every ground of opposition alleging non-compliance with the requirements of section 30 of the Act for the reasons that follow.
[26] The two grounds of opposition alleging non-compliance with section 30(d) of the Act by itself are dismissed for the Opponent’s failure to meet its evidential burden.
[27] The two grounds of opposition alleging non-compliance with section 30(e) of the Act by itself are dismissed for the Opponent’s failure to meet its evidential burden.
[28] The grounds of opposition alleging non-compliance with section 30(h) combined with either section 30(d) or 30(e) of the Act are dismissed for having been improperly pleaded. Since the application is for the registration only of the word CAVALLI not depicted in a special form, the requirements of section 30(h) of the Act do not apply.
[29] The ground of opposition alleging non-compliance with section 30(i) of the Act is entirely dismissed for the reasons that follow.
[30] Section 30(i) of the Act requires an applicant to include a statement in the application that the applicant is satisfied that it is entitled to use the trade-mark in Canada. Not only is there no evidence that the Applicant may have been aware of the prior rights alleged by the Opponent, but the Opponent failed to provide evidence supporting its allegation that the Applicant falsely made the statement required by section 30(i) of the Act. I would add that mere awareness of prior rights alleged by an opponent does not preclude an applicant from truthfully making the statement required by section 30(i) of the Act.
[31] Assuming that the prong of the ground of opposition based on the violation of section 22 of the Act is a valid ground of opposition, it is dismissed for having been improperly pleaded. Section 22 of the Act applies to registered trade-marks. In the present case, the Opponent does not allege ownership of a registered trade-mark.
[32] The Registrar has previously considered section 7(b) of the Act as a valid ground of opposition under the general principle that the Registrar cannot condone the registration of a mark if the applicant’s use of the mark would violate Federal legislation [see Institute National des Appellations d’Origine v Pepperidge Farm (1997), 84 CPR (3d) 540 at 556-557 (TMOB)]. Absent representations from the Opponent, suffice it to say that I dismiss the third prong of the ground of opposition for the Opponent’s failure to meet its evidential burden of showing that the use of the Mark, as of March 9, 2010, would have been contrary to section 7(b) of the Act.
[33] Finally, I note that the Applicant’s written argument references a ground of opposition alleging non-compliance with section 30 of the Act because the Applicant is not a person as defined under the Act. In this regard, the Applicant references paragraph 1 on page 6 of the statement of opposition. However, this paragraph does not contain an allegation that the Applicant is not a person. Rather, it contains an allegation that the Opponent is a “person” within the meaning of section 2 of the Act. In any event, there is no evidence that would have supported an allegation that the Applicant is not a person within the meaning of the Act.
VI Analysis of the Remaining Grounds of Opposition
[34] There are two issues arising from the grounds of opposition that remain to be decided. These issues are:
1. Was the Applicant entitled to registration of the Mark as of March 9, 2010?
2. Was the Mark distinctive of the Applicant’s services as of March 26, 2013?
[35] I will analyse these issues in turn.
VI.1 Was the Applicant Entitled to Registration of the Mark as of March 9, 2010?
[36] This issue arises from the grounds of opposition alleging that the Applicant is not the person entitled to registration of the Mark in view of a likelihood of confusion with:
• the Opponent’s trade-mark CAVALLI previously used or made known in Canada in association with restaurant, bar and catering services, contrary to section 16(2)(a) and 16(3)(a) of the Act; and
• the Opponent’s trade-name CAVALLI or RESTAURANT CAVALLI previously used in Canada in association with restaurant, bar and catering services, contrary to section 16(2)(c) and 16(3)(c) of the Act.
[37] As I have previously indicated, Mr. Damiani does not make any references in his affidavit to the use or promotion of the trade-name CAVALLI or RESTAURANT CAVALLI. Furthermore, since the Opponent has chosen not to make representations in this proceeding, I have no indication of the evidence relied upon to establish use of its alleged trade‑names.
[38] Accordingly, absent representations from the Opponent, I find that the Opponent has failed to provide evidence to establish that it used either its alleged trade-name CAVALLI or RESTAURANT CAVALLI prior to March 9, 2010, and had not abandoned it as of the date of advertisement of the application, namely January 30, 2013 [section 16(5) of the Act].
[39] I therefore dismiss the grounds of opposition based on sections 16(2)(c) and 16(3)(c) of the Act for the Opponent’s failure to meet its evidential burden.
[40] However, I am satisfied that the Opponent has provided sufficient evidence to meet its initial burden of showing that it had used the trade-mark CAVALLI in Canada prior to March 9, 2010, and had not abandoned it as of the date of advertisement of the application. I would add that this was not disputed by the Applicant.
[41] Thus, the question becomes whether the Applicant has met its legal onus to show that, as of March 9, 2010, the Mark was not reasonably likely to cause confusion with the Opponent’s trade-mark CAVALLI.
[42] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that the use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.
[43] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; b) the length of time the trade-marks have been in use; c) the nature of the goods, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight. [See Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, 49 CPR (4th) 321; Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al, 2006 SCC 23, 49 CPR (4th) 401; and Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361 for a thorough discussion of the general principles that govern the test for confusion.]
Consideration of the section 6(5) factors
[44] In most instances, the dominant factor in determining the issue of confusion is the degree of resemblance between the trade-marks in their appearance or sound or in the ideas suggested by them, and other factors play a subservient role in the overall surrounding circumstances [see Beverly Bedding & Upholstery Co v Regal Bedding & Upholstery Ltd (1980), 47 CPR (2d) 145 FCTD), conf. 60 CPR (2d) 70 (FCA)]. In Masterpiece Inc, supra, the Supreme Court of Canada considered the importance of section 6(5)(e) of the Act in conducting an analysis of the likelihood of confusion:
[49] […] the degree of resemblance, although the last factor listed in s. 6(5), is the statutory factor that is often likely to have the greatest effect on the confusion analysis […] if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion. The other factors become significant only once the marks are found to be identical or very similar […] As a result, it has been suggested that a consideration of resemblance is where most confusion analyses should start.
[45] In this proceeding, it is self-evident with regard to section 6(5)(e) of the Act that the trade-marks at issue are identical in sound, appearance and in ideas suggested. Accordingly, as reasoned in Masterpiece, supra, the remaining factors must be carefully considered since they take on added significance in these circumstances.
[46] Absent representations from the Applicant concerning the sections 6(5)(a) and (b) factors, I will not discuss them at length. The parties’ marks possess the same measure of inherent distinctiveness. With respect to the extent to which the marks have become known in Canada, a fair reading of Mr. Damiani’s affidavit leads me to conclude that the Opponent’s trade-mark CAVALLI had become significantly known in the Great Montreal area as of March 9, 2010. In addition, I am satisfied that the Opponent’s evidence establishes that the trade-mark CAVALLI, as of March 9, 2010, had been used by the Opponent in association with restaurant, bar and catering services since June 2003. By comparison, there is no evidence that the Mark, applied for registration on the dual basis of its registration and use in Italy and proposed use in Canada, had either been used or promoted in Canada as of March 9, 2010.
[47] Accordingly, while both trade-marks possess the same measure of inherent distinctiveness, taking into account the extent to which they have become known in Canada, the overall consideration of the section 6(5)(a) factor favours the Opponent. Likewise, the section 6(5)(b) factor favours the Opponent.
[48] I now turn to the nature of the services and the nature of the trade, which are the focus of the Applicant’s written argument.
[49] The Applicant submits that although dissimilarity between the goods or services associated with the respective marks is not definitive of the question of confusion, the nature of goods or services is certainly a relevant consideration; in some circumstances it will carry greater weight than others [see Mattel Inc., supra, at para 73]. The Applicant contends that in the present case the nature of the services will carry greater weight than the other factors.
[50] The Applicant submits that the application for the Mark, as amended on June 3, 2014, is for services entirely unrelated to the services associated with Opponent’s trade-mark.
[51] Absent representations from the Opponent, suffice it to say that I essentially agree with the Applicant that the following services listed in the application for the Mark are distinguishable from the restaurant, bar and catering services associated with the Opponent’s trade-mark:
(1) education services, namely conducting classes, seminars, conferences and workshops in the field of fashion and interior design; providing of training in the field of fashion and interior design; entertainment in the form of beauty pageants, fashion shows, television broadcasts in the field of fashion, fashion modeling for entertainment purposes, television news shows, live radio personality performances, presenting live musical performance, live performances by a musical band, live music concerts providing an informational and entertainment website in the fields of celebrity gossip, entertainment, fashions, sport and fitness; sporting and cultural activities, namely organisation of fashion exhibitions for cultural, sporting and educational purposes; organisation and production of fashion shows; …
[52] I also agree with the Applicant that the services “temporary accommodation services, namely, hotels, motels, boarding houses, guest houses and tourist homes” listed in the application for the Mark are distinguishable from the Opponent’s restaurant, bar and catering services. The mere fact that these services all belong to the general class of hospitality services does not lead to a finding that the parties’ services themselves are similar. Although each case has to be decided based upon its own merit, I agree with the Applicant that the following comments of the Registrar (acting through Member de Paulsen) in Euromed Restaurant Limited v Trilogy Properties Corporation, 2012 TMOB 19 are relevant to the issue:
[23] In his affidavit, Mr. Amaro states that he is not “aware of a Hotel in Canada that does not have a restaurant or a bar or room service providing food” (Amaro affidavit, para. 32) and that hotels in Canada are recognized as having restaurants and bars on their premises as part of the hotel services provided (Amaro affidavit, para. 31). I do not agree that services related to the provision of food and drink are understood to be part of hotel services. Similar to the Courtyard Restaurant Inc. v. Marriott Worldwide Corp.; 2006 CarswellNat 5371 (T.M.O.B.) at para. 56 case, I find that these services occupy different niches as one is primarily concerned with the hotel business and the other with the bar and restaurant business [Sim & McBurney v. Decore Holdings Inc. (2011), 94 C.P.R. (4th) 399 (T.M.O.B.) at para. 16]. The mere fact that the parties’ services all belong to the general class of hospitality services does not lead to a finding that the parties’ services themselves are similar. Furthermore, the parties’ services would be targeted at different parties (those interested in lodging versus those interested in dining).
[53] I would add that Courtyard Restaurant Inc, supra, is a decision that I rendered on behalf of the Registrar, where I stated at para 56: “I find that hotel services and restaurant services are separate services [see Ritz-Carlton Hotel Co. of Montreal v. Federal Diversiplex Ltd. (1979), 59 C.P.R. (2d) 123 (T.M. Opp. Bd.)].” In the absence of evidence or argument to the contrary from the Opponent, I see no reason to reach a different conclusion in the case before me.
[54] Section 6(2) of the Act is not concerned with confusion between the trade-marks themselves, but rather confusion as to the source of the goods or services.
[55] In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. In weighing all of the factors enumerated at section 6(5) of the Act, I am satisfied that the Applicant has discharged its legal onus of establishing that, as of March 9, 2010, there was no reasonable likelihood of confusion between the Mark in association with the services listed in application No. 1,472,409 and the Opponent’s trade-mark CAVALLI in association with restaurant, bar and catering services. More particularly, in the present case, I find that the significant differences between the services associated with the trade-marks at issue definitively tip the balance of probabilities in favour of the Applicant.
[56] Accordingly, I dismiss the grounds of opposition based on sections 16(2)(a) and 16(3)(a) of the Act.
VI.2 Was the Mark Distinctive of the Applicant’s Services as of March 26, 2013?
[57] This issue arises from the ground of opposition alleging that the Mark is not distinctive under section 2 of the Act because the Mark does not distinguish the services in association with which it is used or proposed to be used by the Applicant from the services of the Opponent, nor is it adapted to distinguish them.
[58] In order to meet its evidential burden under the ground of opposition, the Opponent must show that its alleged trade-mark CAVALLI or either its alleged trade-name CAVALLI or RESTAURANT CAVALLI had a substantial, significant or sufficient reputation in Canada in association with restaurant, bar and catering services so as to negate the distinctiveness of the Mark as of March 26, 2013 [see Motel 6, Inc v No 6 Motel Ltd, (1981), 56 CPR (2d) 44 (FCTD); and Bojangles’ International, LLC and Bojangles Restaurants, Inc v Bojangles Café Ltd, 2006 FC 657, 48 CPR (4th) 427].
[59] Here also, absent representations from the Opponent, I find that it has failed to meet its evidential burden with respect to its alleged trade-names CAVALLI and RESTAURANT CAVALLI.
[60] However, further to my review of the Opponent’s evidence and absent representations to the contrary from the Applicant, I am satisfied that the Opponent has met its evidential burden with respect to its trade-mark CAVALLI.
[61] As I have indicated before, when considering the circumstances of this case, I find that the significant differences between the services associated with the trade-marks at issue definitively tip the balance of probabilities in favour of the Applicant. Because the differences in material dates do not have an impact on the determination of the issue of confusion, my finding under the non-entitlement grounds of opposition that there is no likelihood of confusion between the Mark and the Opponent’s trade-mark CAVALLI likewise applies to the non-distinctiveness ground of opposition.
[62] Accordingly, I dismiss the non-distinctiveness ground of opposition.
VII Disposition
[63] Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition under section 38(8) of the Act.
______________________________
Céline Tremblay
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
No Hearing Held
Agents of Record
Robic For the Opponent
Fetherstonhaugh & Co. For the Applicant
Schedule “A”
Summary of the Grounds of Opposition
1. Pursuant to section 38(2)(a) of the Act, the application does not comply with the requirements of section 30 of the Act.
(a) Contrary to section 30(d) of the Act, the Applicant never used the Mark in association with each of the services listed in the application; the Applicant is not the owner of the alleged foreign registration; at the date of filing of the application, the Mark was not used Italy; and the Applicant failed, as the case may be, to name its predecessors in title.
(b) Contrary to sections 30(d) and 30(h) of the Act, the trade-mark allegedly used is not the Mark.
(c) Alternatively or cumulatively, contrary to section 30(d) of the Act, the use of the Mark has not been continuous for each of the services listed in the application.
(d) Contrary to section 30(e) of the Act, at the filing date of the application, the Applicant was already using the Mark in Canada in association with each of the services listed in the application.
(e) Contrary to sections 30(e) and 30(h) of the Act, the trade-mark proposed to be used is not the Mark.
(f) Alternatively or cumulatively, contrary to section 30(e) of the Act, the Applicant never intended to use the Mark in Canada by itself, through a licensee or by itself and through a licensee in association with each of the services listed in the application.
(g) Contrary to section 30(i) of the Act, the Applicant’s statement as to its entitlement to the use the Mark in Canada is false in view of the content of the statement of opposition, including the Applicant’s knowledge of the Opponent’s rights and the unlawfulness of said use. In particular, the use would be, was and is unlawful in that:
(i) it is encroaching upon the proprietary rights of the Opponent;
(ii) it is likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark alleged by the Opponent, contrary to the provisions of section 22 of the Act; and
(iii) it would direct the public attention to the Applicant’s services or business as to cause confusion between them and the services or business of the Opponent contrary to section 7(b) of the Act.
2. Pursuant to section 38(2)(c) of the Act, the Applicant is not the person entitled to registration of the Mark under section 16 of the Act.
(a) Contrary to sections 16(2)(a) and 16(3)(a) of the Act, at the relevant time, the Mark was confusing with the Opponent’s trade-mark CAVALLI previously used or made known in Canada by the Opponent or its predecessors in title (or for their benefit by licensees) in association with restaurant, bar and catering services.
(b) Contrary to sections 16(2)(c) and 16(3)(c) of the Act, at the relevant time, the Mark was confusing with the Opponent’s trade-name CAVALLI or RESTAURANT CAVALLI previously used in Canada by the Opponent or its predecessors in title (or for their benefit by licensees) in association with restaurant, bar and catering services.
3. Pursuant to section 38(2)(d) of the Act, the Mark is not distinctive under section 2 of the Act since the Mark does not actually distinguish the services in association with which it is used or proposed to be used by the Applicant from the services of the Opponent, nor is it adapted to so distinguish them.