FIAL’s GALPERTI trademark allowed: New evidence on appeal establishes prior use
Background
FIAL Finanziaria Industrie Alto Lario SPA appealed a decision of the Trademarks Opposition Board allowing an opposition by Galperti SRL concerning Fial’s application to register the trademark GALPERTI in association with flanges and other metal products (Application No. 1,599,754). The Board had found that Fial was not entitled to registration given Galperti’s earlier established use of the same trademark since 1991, predating the Applicant’s claimed use since 1999.
Fial appealed under section 56 of the Trademarks Act and filed new evidence of its use of the GALPERTI trademark going back to 1985. Justice Tsimberis determined that the new evidence was material and warranted a trial de novo. She found that the new evidence supported Fial’s assertion of earlier use and allowed the appeal.
Materiality and Standards of Review
The standard of review depends on whether the new evidence filed by the Appellant, Fial, is material. If it is, the standard of review is correctness. As stated by Justice Tsimberis, “the appeal acts as a de novo review” and the Court “may exercise any discretion vested in the Registrar.” If the evidence is not material, the usual appellate standard of review of palpable and overriding error applies.
On appeal, Fial filed new evidence consisting of four affidavits to establish use of the subject trademark before 1991. Galperti chose not to cross-examine any of the witnesses. The Court determined that the new evidence was material “as it directly addresses negative findings made by the Board on issues central to assessing the Applicant’s earlier date of use of Fial’s GALPERTI trademark and its entitlement to register that trademark.”
The Court then considered whether the new evidence supported Fial’s assertion that it had used the GALPERTI trademark before 1991.
The Application for The Galperti Trademark is Allowed
The Court granted the appeal, overturning the Board’s decision and allowing the registration of the Fial’s trademark. The new evidence established continuous use of the mark in Fial’s ordinary course of trade from 1986 onward. As the Applicant had met its positive evidentiary burden to establish an earlier date of use than the Respondent, Fial was entitled to register its GALPERTI trademark under sections 38(2)(c) and 16(1)(a) of the Trademarks Act.
The Court concluded that the Appellant was entitled to costs, but a smaller amount than a full award of costs based on the middle of Column III of the Tariff because the new evidence “could have been submitted to the Registrar in the first place to potentially avoid this appeal entirely.” The Court awarded Fial a lump sum of $4,000 plus disbursements.
A copy of Justice Tsimberis’ Reasons may be found here.
