Forever Just Blowing Bubbles: Federal Court’s Decision On GIUSTI PROSECCO

On April 22, 2024, the Federal Court (the Court) issued its decision in D.M.C. SRL v Giusti, 2024 FC 605, upholding the Trademarks Opposition Board’s (TMOB’s) decision rejecting D.M.C. SRL’s (DMC’s) opposition to Ermenegildo Giusti’s (the Respondent’s) application to register the trademark GIUSTI PROSECCO (the Mark).

The Respondent’s company sells prosecco in association with the Mark, used under license from the Respondent. In 2015, the Respondent’s trademark application for the Mark was advertised for opposition and DMC opposed it on various grounds, including that the Mark was not used in Canada since the claimed first use data; is primarily merely a surname; and likely to cause confusion with DMC’s various DE GIUSTI trademarks. During the proceeding, DMC sought to add an additional ground of opposition based on subsection 30(i) of the previous version of the Trademarks Act. However, the TMOB refused leave, finding that the request was made late in the opposition without reason for delay, had no chance of success, and would unnecessarily prejudice the Respondent.  DMC also sought leave to file further affidavit evidence (the Second Affidavit) as reply evidence supporting its claims, but this was also refused by the TMOB.

The TMOB dismissed DMC’s opposition, which DMC later appealed, arguing that the TMOB erred in refusing (i) leave to add its subsection 30(i) ground of opposition; (ii) to admit the Second Affidavit as reply evidence; and (iii) any of the previous grounds of opposition.

The Court ultimately determined that the TMOB did not err on these points, finding that:

1. for its request to add a subsection 30(i) ground of opposition, DMC was significantly delayed without proper justification and granting such request would prejudice the Respondent;
2. the information provided in the Second Affidavit did not fit the category of reply evidence, which should directly respond to a trademark applicant’s evidence and not include evidence that could have been filed as part of the opponent’s evidence in chief; and
3. the TMOB committed no reviewable error in rejecting any ground of opposition.

This led the Court to dismiss the appeal with costs.

Summary By: Amy Ariganello