In Loro Piana S.P.A. v. Canadian Council of Professional Engineers (2009 FC 1095), the Federal Court reversed a Hearing Officer’s decision to delete certain wares from Loro Piana’s mark ING. LORO PIANA & C. & DESIGN (the “Mark”), for non-use. On appeal, Loro Piana was able to show that invoices that had been before the Hearing Officer, which referred to the wares in question by code, in fact established use by filing additional exhibits explaining the meaning of those codes. The Court also held that by adding the text “FABRICS MADE IN ITALY,” Loro Piana had not deviated from the registered form of its trademark as the text would not have been perceived as forming part of the mark itself.

At the request of the Canadian Council of Professional Engineers (the “Council”), the Registrar of Trademarks had issued a notice under subsection 45(1) of the Trade-marks Act (the “Act“), requiring that Loro Piana, a maker of fabrics and clothing, show use of its mark with respect to the wares for which it had been registered. Loro Piana filed an affidavit with exhibits showing labels bearing its mark of the sort sewn to its wares, as well as invoices allegedly showing sales of the trade-marked wares in Canada during the relevant period. The invoices clearly showed sales of fabric, but the Hearing Officer was unable to determine if any other wares had been sold because they were listed in code, and she ordered reference to them deleted from the mark’s registration.

Loro Piana appealed pursuant to subection 56(1) of the Act, arguing that it had additional evidence to present: a second affidavit with new exhibits explaining the meaning of its codes. Because this new evidence would have materially affected the Hearing Officer’s findings of fact, the Court heard the matter on a do novo basis, considering all of the evidence before it.

The Court held that the new affidavit and exhibits established sales of every ware Loro Piana claimed except “threads,” which the Court ordered deleted from the registration. The Court also held that Loro Piana had not deviated from the registered form of its mark by adding the text “FABRICS MADE IN ITALY.” In the case of Pratte in Registrar of Trade-marks v. Compagnie International pour l’informatique CII Honeywell Bull [(1985) 1 F.C. 406, 4 C.P.R. (3d) 523], the Federal Court of Appeal stated that the applicable test was a question of whether “an unaware purchaser would be likely to infer that both [forms of the mark], in spite of their differences, identify goods having the same origin.” In the case at bar, the Court held that the mark stood out from the superfluous text, and that the text would not have been perceived as forming part of the mark.