Constellation Brands Québec Inc. v Sociedad Vinícola Miguel Torres, S.A., 2016 TMOB 4
The Canadian Trade-Marks Opposition Board recently granted an opposition and rejected an application on the basis that the sales date of wine that was subsequently shipped to Canada did not qualify as a first-use date.
On February 9, 2012, Sociedad Vinícola Miguel Torres, S.A. (“Miguel Torres”) applied to register the mark HEMISFERIO for wines, based on use of the mark in Canada since at least as early as October 28, 2011. Constellation Brands Québec Inc. (“Constellation Brands”), who claimed to be Miguel Torres’ former sales representative, opposed the application on August 6, 2013, on the basis, among other grounds, that the HEMISFERIO application did not contain the actual first-use date of the mark in Canada, as required by Sections 30(b) and 4(1) of the Trade-Marks Act, RSC 1985, c T-13 (“the Act”).
Section 30(b) of the Act states that “An applicant for the registration of a trade-mark shall file with the Registrar an application containing … (b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of goods or services described in the application; …”.
Section 4(1) of the Act states that “A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.”
In defense of its application, Miguel Torres submitted nine sample invoices, the earliest of which was dated October 28, 2011, showing sales of the wine bearing the HEMISFERIO mark to a distributor in Canada. Among the details included in the October 28, 2011, invoice were (a) Miguel Torres’ name and address in Chile, (b) the name and Canadian address of the distributor in Canada to whom the invoice was issued, (c) a product description reading “HEMISFERIO SB 750cc,” and (d) the October 28, 2011, date. Miguel Torres also filed price lists, product descriptions, sample wine labels, and promotional materials/articles, all featuring the HEMISFERIO mark, as well as a wine list from a Canadian restaurant on which “MIGUEL TORRES ‘HEMISFERIO’” wine appeared.
At the hearing, Constellation Brands contended that Miguel Torres’ own evidence refuted its claimed first-use date of October 28, 2011, as the 2011 invoice also included a notation in Spanish showing an approximate arrival date for the goods shipped into Canada of January 26, 2012; thus, the transfer of possession would have only occurred in January 2012, not October 2011.
The Board determined that given the available evidence, it was reasonable to conclude that Miguel Torres’ claimed first-use date stemmed from the transaction between Miguel Torres and the Canadian distributor reflected in the October 28, 2011 invoice. In examining the invoice, the Board noted that Miguel Torres had failed to translate the Spanish inscription “fecha de llegada aproximada” (“approximate date of arrival”) corresponding to the January 26, 2012, date even though it had translated other portions of the invoice into English. Even if it were to disregard the Spanish inscription, the Board reasoned, other notations on the invoice indicated that the wine was being shipped from Chile to an entity in Canada via a vessel. Since merchandise shipped on board a vessel could not have arrived in Canada on the same day that it departed from Chile, it concluded that transfer of property in or possession of the wine bearing the HEMISFERIO mark did not take place in Canada until after October 28, 2011.
Relying on Section 4(1) of the Act, the Board concluded that sale of goods on a particular date, but destined to arrive in Canada at a later date, cannot form the basis of a date of first use and rejected the application.
This case underscores the dangers of claiming an overly aggressive first-use date in Canada, and applicants are encouraged to designate a first-use date that reflects the date that goods would have actually arrived and changed possession in Canada.