Milano Pizza Ltd. v. 6034799 Canada Inc.

Milano Pizza Ltd. v. 6034799 Canada Inc.

The Milano Design Registration (TMA571,144) is invalid under TMA s18(1)(b) because MPL failed to demonstrate sufficient control over the character or quality of services provided by independent Milano licensees as required by s50(1); that lack of control meant the mark was not distinctive of MPL (and, given the proliferation of independent operators and long coexistence of PIZZERIA MILANO in Masson, not distinctive of any single operator), and therefore the registration must be expunged.

Citation
2022 FC 425
Parties
Plaintiff; Defendant by Counterclaim: Milano Pizza Ltd.; Defendant; Plaintiff by Counterclaim: 6034799 Canada Inc.; Defendant; Plaintiff by Counterclaim: Chadi Wansa; Defendant; Plaintiff by Counterclaim: Youssef Zaher a.k.a. Joseph Zaher; Defendant; Plaintiff by Counterclaim: Yousef Nassar a.k.a. Joe Nassar; Defendant by Counterclaim: Mazen Kassis; Defendant by Counterclaim: Marwan Kassis; Defendant by Counterclaim: Mahmoud Tabaja; Defendant by Counterclaim: Milano Baseline; Defendant by Counterclaim: Joe Kassis
Court
Federal Court
Jurisdiction
Canada
Judgment Date
29 March 2022
Procedural Posture
Trademark Litigation Under the Trademarks Act / Final Judgment on Liability (expungement and Costs)
Outcome
Plaintiff's action dismissed; Milano Design Registration TMA571,144 expunged under TMA s18(1)(b); remaining counterclaim claims dismissed; lump sum costs awarded to Defendants/Plaintiffs by counterclaim.
Legal Topics
Distinctiveness, Controlled Licensing (s50), Expungement (s18), Passing Off (s7), Infringement (s19, S20), Depreciation of Goodwill (s22), Costs
Source Language
English
Intellectual Property Trademarks Unfair Competition Civil Litigation Contract (ancillary) Distinctiveness Controlled Licensing (s50) Expungement (s18) +4 more

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Parties

Milano Pizza Ltd.

Plaintiff; Defendant by Counterclaim

6034799 Canada Inc.

Defendant; Plaintiff by Counterclaim

Chadi Wansa

Defendant; Plaintiff by Counterclaim

Youssef Zaher a.k.a. Joseph Zaher

Defendant; Plaintiff by Counterclaim

Yousef Nassar a.k.a. Joe Nassar

Defendant; Plaintiff by Counterclaim

Mazen Kassis

Defendant by Counterclaim

Marwan Kassis

Defendant by Counterclaim

Mahmoud Tabaja

Defendant by Counterclaim

Milano Baseline

Defendant by Counterclaim

Joe Kassis

Defendant by Counterclaim

Procedural Posture

Trademark Litigation Under the Trademarks Act / Final Judgment on Liability (expungement and Costs)

Legal Issues

  1. 1 Whether Milano Design Registration TMA571,144 is invalid for non-distinctiveness under TMA s18(1)(b)
  2. 2 Whether MPL exercised sufficient control under TMA s50(1) such that licensees’ use enured to MPL
  3. 3 Whether coexistence of PIZZERIA MILANO (Masson QC) defeats distinctiveness

Ratio Decidendi

The Milano Design Registration (TMA571,144) is invalid under TMA s18(1)(b) because MPL failed to demonstrate sufficient control over the character or quality of services provided by independent Milano licensees as required by s50(1); that lack of control meant the mark was not distinctive of MPL (and, given the proliferation of independent operators and long coexistence of PIZZERIA MILANO in Masson, not distinctive of any single operator), and therefore the registration must be expunged.

Court Disposition

Plaintiff's action dismissed; Milano Design Registration TMA571,144 expunged under TMA s18(1)(b); remaining counterclaim claims dismissed; lump sum costs awarded to Defendants/Plaintiffs by counterclaim.

Orders

  • The Plaintiff's action, as amended on January 8, 2021, is dismissed.
  • Registration number TMA571,144 for trademark MILANO PIZZERIA & Design dated November 22, 2002 is invalid and is to be expunged pursuant to paragraph 18(1)(b) of the Trademarks Act.