Leonardo Da Vinci Is Still Alive!

By Scott Miller, February 9th, 2016

Federal Court File Nos. T-1104-15 and T-2125-15

Scott Miller and the litigation team at MBM Intellectual Property Law have successfully joined its Italian wine making client, Dallevigne S.p.A. (Dallevigne), to an appeal of a decision of the Canadian Trademark Office expunging the trademark DA VINCI (TMA303667) for non-use pursuant to s.45 of the Trademarks Act. The party who originally requested the s.45 confirmed it will not participate in the appeal of the trademark office decision to the Federal Court. However, the maintenance of the s.45 decision is relevant to Dallevigne because it had filed a trademark application, CANTINE LEONARDO DA VINCI & Design No. 1561950 (CANTINE) which was refused by the Trademark Opposition Board (TMOB) solely because, at the time of the TMOB decision, the DA VINCI mark was still on the register. Dallevigne has appealed the TMOB decision refusing the registration of the CANTINE trademark.   

The Federal Court correctly found that Dallevigne (1) will be directly affected by the s.45 appeal decision and (2) will suffer prejudice if it was not allowed to be joined to the s.45 appeal because Constellation Brands Quebec Inc., the owner of the DA VINCI registration is continuing to assert the impugned trademark against the CANTINE trademark, without the opportunity for Dallevigne, or any other party,  to challenge the registration being asserted against Dallevigne.  

The Federal Court also correctly stayed the appeal of the CANTINE trademark pending the outcome of the s.45 appeal recognizing that proving irreparable harm is not a pre-condition to the granting of a stay where the Federal Court is effectually enjoining itself as opposed to exercising power over an administrative body. In such situations, a stay will be granted if the Court believes a party will not be unfairly prejudiced and it’s in the interest of justice to treat the request for a stay analogous to a scheduling or an adjournment request.  

In all, it is possible to have a party joined in one proceeding and at the same time stay another proceeding when fairness, common sense and the interest of justice are considered.

For more information about this topic please contact:

Scott Miller, Partner, Head of the Litigation Department 
T: 613.801.1099
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.