Meubles Domani's v. Guccio Gucci S.p.A.
A-571-91
MacGuigan J.A.
19/6/92
12 pp.
Appeal from permanent injunction preventing appellant from selling furniture in association with trade marks "Paolo Gucci" and "Paolo designed by Paolo Gucci" -- Respondent designs, manufactures watches, handbags, footwear, clothing in association with trade name and mark "Gucci" -- Respondent's goods of high quality craftsmanship and style -- Appellant sells furniture -- Paolo Gucci related to founding family of respondent -- Went out on own as designer primarily of furniture, in 1984 after association of over 30 years -- Trial Judge holding as furniture not included in description of wares in registration of either of respondent's trade marks no infringement under Trade-marks Act, s. 19 -- S. 20 deeming infringement by sale of wares in association with confusing trade mark unless use: (1) bona fide; (2) other than as trade mark; (3) of accurate description of character of wares or services; (4) in such manner as is not likely to have effect of depreciating value of goodwill attaching to trade mark -- Trial Judge finding use by appellant as trade mark confusingly similar to respondent's mark and appellant not saved by s. 20(b)(ii), in part because furniture not designed by individual Paolo Gucci -- Appeal dismissed -- Appellant failed to fulfil three of four conditions to come within exception in s. 20(b)(ii) -- (1) Insufficient evidence to find lack of bona fides on appellant's part -- (2) "Paolo designed by Paolo Gucci" used as trade mark -- Trade mark used to distinguish wares from those of others -- Intention of user and recognition by public relevant to show trade mark use -- Adoption by trader for purpose of distinguishing own goods governing factor -- By own evidence Paolo Gucci intended to identify origin of products by using labels and insignia in question -- Appellant also used labels and insignia to distinguish wares, if not to mislead public into thinking they were respondent's creations -- (3) Use of "Paolo Gucci" and "Paolo designed by Paolo Gucci" not accurate description of character or quality of appellant's wares -- Appellant failed to establish palpable and overriding error in Trial Judge's finding furniture not designed by Paolo Gucci -- (4) Appellant not impeaching Trial Judge's finding appellant's use had likely effect of depreciating value of goodwill attached to trade marks -- Injunction not too broad -- Judgment only affects use of trade marks in association with furniture -- Not applying to Paolo Gucci who is not party to action -- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2, 6, 7(b), 19, 20, 22.