Mario Valentino S.p.A. v. Valint N.V.
T-2601-97 / T-2602-97 / T-2603-97
Campbell J.
30/12/99
20 pp.
Appeals from decision of Registrar of Trade-marks refusing registration of trade-marks cited in applications 573,206, 573,865, 596,311 filed by Mario Valentino S.p.A.-Applicant, opponent designing, manufacturing high end consumer goods-In 1979, as result of "various legal and administrative controversies" in several countries regarding respective trade-marks, predecessors to parties herein entered into co-existence agreement-Applicant filing following applications for consideration by Registrar: application 573,206 for registration of trade-mark "Mario Valentino" in Canada in association with personal accessories, application 573,865 for registration of trade-mark "Mario Valentino" in Canada in association with outer clothing, application 596,311 for registration of trade-mark "Mario Valentino" in Canada in association with jewellery, watches, clocks-Opponent filing similar statements of opposition on November 2, 1990 with respect to each of three applications-Registrar refusing applicant's application for registration of trade-mark "Mario Valentino" in relation to goods in question-Test on present appeal whether Registrar has gone wrong-Registrar right in refusing to enforce agreement-Oppositions filed by opponent may be contrary to terms of agreement, but Trade-marks Act not providing forum in which to compel enforcement of such terms-More appropriate remedy may be obtained through pursuit of damages in civil suit as result of proven breach of agreement-Agreement should be given no effect although properly before Court herein-Applicant admitting Mario Valentino name of now deceased designer-Based on admission, Registrar found proposed mark "Mario Valentino" could not be registered under Act, s. 12(1)(a)-No error in Registrar's analysis on said issue-Registrar heard, considered, properly rejected applicant's argument on issue-Applicant's main argument with respect to issue of confusion Registrar made error in applying test for confusion as that being in mind of "average purchaser"-No proof all sales of wares cited in applicant's applications will occur within suggested "high end" niche of marketplace-High degree of risk of reaching wrong factual conclusion by relying on affidavit, obiter opinions tendered by applicant on confusion issue-No error in Registrar's analysis on issue-Applicant's new evidence argument on issue of confusion dismissed-Appeals dismissed-Trademarks Act, R.S.C., 1985, c. T-13, s. 12(1)(a).