FFAUF SA v Industria di Diseno Textil SA, 2020 FC 521
Why Is This Case Important?
This case is significant because it clarifies how new evidence on appeal under section 56 of the Trademarks Act can effectively replace the entire evidentiary record from what was before the Registrar in a section 45 non-use proceeding, requiring the Federal Court to conduct a de novo review. It also reinforces the principle that word marks can be used in any font, style, colour, and changes in size, so long as the elements of the mark remain recognizable.
Summary
FFAUF S.A., a family-owned marketing company and majority shareholder of Pasta ZARA, held the Canadian trademark registration for “LE DELIZIE ZARA”. Pasta ZARA, under an exclusive worldwide license, used the mark on food products, including rice and breadsticks.
The Respondent, Industria de Diseno Textil, S.A. initiated a section 45 proceeding requiring FFAUF to prove use of the mark in Canada. FFAUF filed an affidavit showing sales of rice and breadsticks in Canada and packaging displaying the mark, but the Registrar found the affidavit inadmissible due to formal deficiencies (e.g., lack of proper jurat and translation). With no admissible evidence, the Registrar expunged the registration but noted that, had the affidavit been accepted, she would have found use of the trademark in association with rice and breadsticks.
FFAUF appealed, submitting a new affidavit that corrected the deficiencies and included similar evidence.
The Respondent challenged the evidence, including how the mark was depicted on packaging, the product catalogue, and other materials, arguing that there was not a single example of use of the mark as registered. Instead, it argued that the display on the packaging presents two separate marks “LE DELIZIE” and “ZARA” and considering the prominence given to the words “LE DELIZIE” on the product packaging as well as the fact that the word “ZARA” appears on a second line, in a different font and colour and a considerably smaller size, the trademark as used is substantially different than the mark as registered.
Court Finding
The Federal Court allowed FFAUF’s appeal and rejected the argument that the stylized presentation of the mark invalidated its use, affirming that word marks may be used in various fonts and styles as long as the identity of the mark is preserved. The filing of the new affidavit submitted on appeal was also found admissible and sufficient to establish trademark use in Canada during the relevant period. The Court conducted a de novo review, noting that the comments of the Registrar on the merits of the case are to be treated as obiter dictum and given little weight. The Court concluded that FFAUF, through its licensee Pasta ZARA, sold rice and breadsticks in Canada using packaging that displayed the registered mark “LE DELIZIE ZARA”. The Court also found that FFAUF exercised adequate control over product quality, satisfying the requirements of section 50(1) of the Trademarks Act. As a result, the Court set aside the Registrar’s decision and ordered that the registration be maintained only for rice and breadsticks, as those were the goods for which use was demonstrated.
Key Takeaways
This decision reinforces the importance of proper evidentiary form in trademark proceedings and clarifies that word marks may be used in various fonts, colours, layouts, and sizes, without losing their legal identity, as long as all the words remain present and recognizable. It confirms that trademark owners can rely on use by licensees if they maintain control over product quality, satisfying section 50(1) of the Trademarks Act. The case also highlights the Federal Court’s authority to conduct a full de novo review when new evidence is submitted, and demonstrates that even minimal commercial activity, if properly documented, can be sufficient to maintain a trademark registration under section 45.
