The Federal Court (Tsimberis J.) recently held that the Applicant, F.I.A.L. Finanziaria Industrie Alto Lario, S.P.A. (“Applicant” or “Fial”) is entitled to register the trademark, GALPERTI pursuant to ss. 38(2)(c) and 16(1)(a) of the Trademarks Act (the “Act”) in an appeal of a decision of the Trademarks Opposition Board (“Board”) that had refused Fial’s application based on an opposition by the Respondent, Galperti SRL (“Galperti”). In reaching its conclusion, the Court considered the evidence before the Board as well as new evidence filed on appeal establishing use of the trademark by Fial as early as 1986, prior to the Respondent’s first use in 1991.
F.I.A.L. Finanziaria Industrie Alto Lario, S.P.A. v. Galperti SRL, 2024 FC 976
The Initial Opposition
Fial’s application for the GALPERTI trademark was filed in October 2012, to be used in association with various metal products manufactured by Fial. Fial claimed use of the mark in Canada since at least as early as 1999.
The Respondent Galperti Filed an opposition in 2015, which concluded in June 2022. The grounds for this opposition were fourfold, pursuant to:
- Section 38(2)(a) of the Act, on the basis that Fial’s GALPERTI Application does not comply with the formal requirements set out in ss. 30(b), 30(h) and 30(i) of the Act;
- Section 38(2)(c) of the Act, on the basis that the Applicant is not entitled to registration of their trademark pursuant to s. 16(1)(a) of the Act, given that at the relevant time, the Respondent’s confusing trademark had been previously used or made known in Canada by the Respondents or its predecessors in title;
- Section 38(2)(c) of the Act, on the basis that the Applicant is not entitled to trademark registration under s.16(1)(c) given that at the relevant time, the Respondent’s confusing tradenames had been previously used or made known in Canada by the Respondent or its predecessors in title; and,
- Section 38(2)(d) of the Act, on the basis that Fial’s GALPERTI trademark is not distinctive as defined in s. 2 of the Act.
While the Board ultimately held in favour of the Respondent, it did reject the first and last of the Respondent’s opposition grounds, specifically those pursuant to ss. 38(2)(a) and (d) of the Act, on the basis that the Respondent failed to meet its evidentiary burdens.
However, the Board accepted the second and third of the Respondent’s grounds for opposition pursuant to ss. 38(2)(c), 16(1)(a) and 16(1)(c) of the Act. First, The Board found that Fial’s GALPERTI mark was confusing with the Respondent’s mark and trade name as used prior to the date of first use claimed in the Application. The Board further held that the Fial’s evidence was insufficient to establish that the mark was used any earlier than the date of 1999 claimed in the Application, and maintained that the material date remained “the last day of 1999”.
The Board ultimately held that the Respondent had used its trademarks and tradename in 1991, earlier than when Fial had first used its GALPERTI trademark and that this use of Fial’s GALPERTI trademark was confusing with the Respondent’s earlier use.
The Appeal of the Opposition Decision
As noted by the Court, the Respondent did not appeal the finding that it had first used the trademarks in 1991, nor did it file any additional evidence establishing an earlier date for the first use of its CALPERTI trademarks.
For the appeal to be successful, the Fial therefore had to establish prior continuous use of the GALPERTI trademark in Canada prior to 1991, as that was the date of first use of the mark by the Respondent.
To establish this, the Fial filed new evidence before the Court. The Respondent took the position that the evidence presented did not demonstrate Fial’s use of the trademark before 1991, and therefore, Fial should not be entitled to register its GALPERTI trademark.
Issues on Appeal
On appeal, the parties agreed on the two issues to be decided. First, did the additional evidence filed by Fial affect the standard of review? Second, in applying the standard of review, should the Court modify or interfere with the decision of the Board?
When conducting an appeal pursuant to the provision in s. 56 of the Act, the Court must ask if it considers any new evidence to be material. If so, the appeal acts as a de novo review of the evidence, and the correctness standard is to be applied to the review. No deference is to be accorded to the original decision-maker in this case. However, only specific issues to which new evidence relates are up for review.
For new evidence to be considered material, it must be “sufficiently substantial and significant,” and have “probative value.” It may increase the cogency of the record or fill gaps in a deficient one. The materiality test, found at paragraph 35 of the decision, requires the court to assess the nature, significance, probative value, and reliability of the new evidence being presented.
Analysis – The New Evidence on Appeal
The Court found several evidentiary gaps before the Board in relation to the earliest date of first use of Fial’s GALPERTI trademark.
On appeal, Fial filed four new affidavits concerning the use of Fial’s GALPERTI trademark prior to 1991, which the Court found to be material to the issue. Given that the new evidence was found to be material, the Court conducted a de novo review of the evidence in relation to the overarching evidentiary gap concerning the use of the GALPERTI trademark prior to 1991 and the non-entitlement ground based on prior use pursuant to s. 16(1)(a) of the Act.
Analysis – The Legal & Evidentiary Burdens
The Court clarified the legal and evidentiary burdens at play in a case where the applicant seeks an earlier claim date after an opposition has been filed. As noted by the Court, s. 16(1) of the Act, which incorporates sections of s. 30, establishes the requirement for continuous use of a trademark in the normal course of trade. However, the case law has established that this is a contextual exercise to be decided on a case-by-case basis, and that periods of non-use are permitted, but only if those periods fall outside the normal course of trade.
The Court stated that if an applicant claims a date of use earlier than the date claimed in its trademark application, they bear the evidentiary burden to support the earlier alleged date of use, failing which the date of first used claimed in the application will apply. In this case, in the absence of rebuttal evidence on the part of the Respondent, Fial’s new affidavit evidence was adequate for the Court to accept that their positive evidentiary burden had been met, and saw the Court accept the earlier claimed date of first use.
Analysis – Continuous Use of the Trademark from the Date Claimed
While the evidence filed by Fial included no documents, the Court found no reason to discount its validity. Further, the information was uncontested by the Respondent. The Court therefore concluded that the evidence presented, in addition to the Applicant’s other evidence before the Board, established that the GALPERTI mark had been in use by Fial since 1986, earlier than the Respondent’s use of the GALPERTI mark in 1991. Having proven that the GALPERTI mark had been continuously used from 1986 onward in the normal course of trade in Canada, Fial was found to be entitled to register this trademark, pursuant to ss. 38(2)(c) and 16(1)(a) of the Act.