TRADE MARKS |
Registration |
Bacardi & Co. v. Havana Club Holding S.A.
T-1181-01
2003 FC 938, Martineau J.
31/7/03
15 pp.
Appeal from Registrar of Trade-marks' decision rejecting opposition by applicant to respondent's application for registration of mark "Havana Club" design--Trade-Marks Act, s. 38(2) providing grounds for statement of opposition to registration of trade-mark--Decisions of Registrar on matters within area of expertise to be reviewed on standard of reasonableness simpliciter, at least in absence of additional evidence on appeal--Act, s. 15 permitting registration of trade-mark that would otherwise be considered confusing with registered trade-mark if applicant owner of two marks, as herein--Applicant arguing respondent not real owner of registered mark as respondent's, predecessors' titles invalid--Registrar concluded did not have jurisdiction to determine validity of registration of registered mark "Havana Club", other than to recognize respondent current owner of registered mark--Registrar of view registration of trade-mark must be accepted on its face, even in opposition proceedings --He concluded Federal Court has exclusive jurisdiction, under Act, s. 57 to correct errors that might be in trade-mark register--Conclusion not only reasonable but also correct in law--History of registration of registered mark revealing Registrar accepted evidence of change of title, and on September 24, 1963 entered name Jose Arechabala S.A. Nacionalizada as owner of registered mark--Subsequently, Cubaexport, H.R.L. and finally respondent successive registered owners of registered mark--Registration still in effect--No application to amend register under s. 57 submitted--Registrar creature of statute and has no inherent jurisdiction--No provision in Act that either expressly or by necessary implication empowers Registrar to declare applicant henceforth owner of registered trade-mark--In opposition proceedings, only trade-mark "at issue" subject of opposition--Registration of trade-mark valid when entered in register unless amended or struck out by competent authority--Registrar could reasonably conclude respondent's application conformed to requirements of Act, new mark registrable, respondent person entitled to registration of mark and new mark distinctive--Appeal dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 15, 38(2), 57.