Date: 20220404  
Docket: T-152-17  
Citation: 2022 FC 425  
Ottawa, Ontario, April 4, 2022  
PRESENT: The Honourable Justice Fuhrer  
BETWEEN:  
MILANO PIZZA LTD.  
Plaintiff  
and  
6034799 CANADA INC.; CHADI WANSA; YOUSSEF ZAHER, A.K.A. JOSEPH  
ZAHER; AND YOUSEF NASSAR, A.K.A. JOE NASSAR  
Defendants  
AND BETWEEN:  
6034799 CANADA INC.; CHADI WANSA; YOUSSEF ZAHER, A.K.A. JOSEPH  
ZAHER; AND YOUSEF NASSAR A.K.A. JOE NASSAR  
Plaintiffs By Counterclaim  
and  
MILANO PIZZA LTD.; MAZEN KASSIS; MARWAN KASSIS; MAHMOUD  
TABAJA; MILANO BASELINE; AND JOE KASSIS  
Defendants By Counterclaim  
Page: 2  
AMENDED JUDGMENT AND REASONS  
Table of Contents  
I. Overview________________________________________________________________ 3  
II. Factual Background _______________________________________________________ 5  
(1) Parties ________________________________________________________________ 5  
(2) MILANO PIZZERIA Business and Licences Granted by MPL ___________________ 6  
(3) Baxter Location________________________________________________________ 11  
(4) Third Party PIZZERIA MILANO in Masson, QC _____________________________ 16  
(5) Parties’ Live Evidence __________________________________________________ 17  
(6) Prosecution History Regarding the Milano Design Registration __________________ 17  
(7) Other Third Party MILANO Marks ________________________________________ 19  
III.  
IV.  
Procedural History _____________________________________________________ 19  
2018 Summary Judgment ________________________________________________ 20  
V. Dispute and Issues________________________________________________________ 22  
VI. Relevant Provisions ____________________________________________________ 25  
VII. Analysis______________________________________________________________ 25  
A. Is the Milano Design Registration Invalid? __________________________________ 26  
(a)  
Invalidity under the TMA s 18(b) for lack of distinctiveness _________________ 27  
(i) Insufficient controlled licensing under the TMA s 50(1) ____________________ 27  
(ii)  
(b)  
Lengthy co-existence of PIZZERIA MILANO in Masson, QC_____________ 39  
Invalidity under the TMA s 18(c) because of abandonment __________________ 42  
Invalidity under the TMA s 18(d) because of non-entitlement ________________ 42  
Invalidity because claimed first use date precedes incorporation date _________ 44  
Whether Corporate Defendant’s predecessor used the Milano Design Mark prior to  
(c)  
(d)  
(e)  
March 1994_____________________________________________________________ 45  
(f)  
Invalidity because of lack of disclaimer of MILANO _______________________ 45  
(g)  
Enforceable rights in the registered Milano Design Mark (and/or the Milano Word  
Marks)46  
G. Actions and communications of MPL and the Personal Defendants by Counterclaim _ 47  
(a)  
Have MPL and the Personal Defendants by Counterclaim made false or misleading  
statements tending to discredit the business, goods or services of the Defendants, in  
contravention of the TMA s 7(a)? ____________________________________________ 48  
(b)  
Have MPL and the Personal Defendants by Counterclaim directed public attention  
to their goods, services or business in such a way as to cause or be likely to cause confusion  
with those of the Defendants, in contravention of the TMA s 7(b)? __________________ 52  
Page: 3  
(c)  
Have MPL and the Personal Defendants by Counterclaim passed off their goods or  
services as and for those ordered or requested, in contravention of the TMA s 7(c)? ____ 54  
(d) Have MPL and the Personal Defendants by Counterclaim made use, in association  
with goods or services, of any description that is false in a material respect and likely to  
mislead the public as to their geographical origin, in contravention of the TMA s 7(d)(ii) 55  
H. Have the Defendants used the trademark MILANO BAXTER and acquired any  
reputation or goodwill in this mark? ___________________________________________ 56  
VIII. Conclusions___________________________________________________________ 57  
IX.  
Costs ________________________________________________________________ 58  
Annex “A” : Summary of the Parties’ Live Evidence at Trial _______________________ 62  
Annex “B” : Relevant Provisions_______________________________________________ 71  
I.  
Overview  
[1]  
At the heart of this dispute are take out restaurants operating as MILANO PIZZERIA in  
Ottawa and surrounding areas, and the Plaintiff’s rights in the trademark MILANO PIZZERIA &  
Design reproduced below [Milano Design Mark], that are contested by alleged former licensees:  
[2]  
The Milano Design Mark is registered in the Plaintiff’s name under registration number  
TMA571,144, dated November 22, 2002 for “take out restaurant services, with delivery” based  
on use in Canada since at least as early March 1994 [Milano Design Registration]. No  
predecessor in title is named. The word PIZZERIA is disclaimed.  
[3]  
The registrability of the Milano Design Mark at the time of registration is no longer in  
question in this dispute. Justice Mactavish (as she then was) sided with the Plaintiff on this  
 
Page: 4  
narrow issue in summary judgment motions brought by these parties (Milano Pizza Ltd v  
6034799 Canada Inc, 2018 FC 1112 [2018 Summary Judgment]). The validity of the Milano  
Design Mark, however, remained in issue at the trial of this matter, along with the Plaintiff’s  
claimed rights in the unregistered word marks MILANO PIZZERIA, MILANO PIZZA,  
MILANO’S PIZZA and MILANO’S [collectively, Milano Word Marks]. In these Reasons, I  
refer to all of the Plaintiff’s asserted trademarks together as “Milano Marks” including, for  
clarity, the Milano Design Mark.  
[4]  
As explained in greater detail below, the Plaintiff presently claims for trademark  
infringement, passing off, and depreciation of goodwill, while the Defendants counterclaim for  
expungement of the Milano Design Registration by reason of non-distinctiveness, abandonment,  
and non-entitlement. In addition, the Defendants seek redress in their counterclaim for false or  
misleading statements allegedly made by the Plaintiff tending to discredit the Defendants’  
business, goods or services, passing off, and making use by the Plaintiff of materially false  
descriptions that are likely to mislead the public as to the geographic origin of the goods and  
services ordered by the public.  
[5]  
For the reasons that follow, the Plaintiff’s action is dismissed, while the Defendants’  
counterclaim for the expungement of the Milano Design Registration is granted pursuant to  
paragraph 18(1)(b) of the Trademarks Act, RSC 1985, c T-13 [TMA]. The Plaintiff has failed to  
demonstrate sufficient controlled licensing of the Milano Design Mark, as contemplated by the  
TMA s 50(1), to justify maintaining the Milano Design Registration. The balance of the  
Defendants’ counterclaim otherwise is dismissed.  
Page: 5  
Shortly before the trial of this matter, the parties agreed to bifurcate the liability and  
[6]  
damages issues. In light of the findings on the liability issues in this matter, however, the  
damages issues have been rendered moot in my view.  
II.  
Factual Background  
[7]  
Justice Mactavish summarized the factual context, as well as the evidence and  
submissions the parties presented on their summary judgment motions, which formed the  
backdrop for her analysis: 2018 Summary Judgment, above at paras 1-23, 42-82. Although  
overlapping with the summary judgment factual context, what follows is a description of the  
background facts applicable to the trial of this matter, including a summary of the parties’  
evidence. For this background, I draw on the live and documentary evidence at trial, the agreed  
partial statement of facts submitted by the parties, as well as the 2018 Summary Judgment.  
(1)  
Parties  
[8]  
The Plaintiff/Corporate Defendant by Counterclaim, Milano Pizza Ltd. [Plaintiff or MPL]  
is an Ontario corporation incorporated on May 14, 1996 by the individual Defendant by  
Counterclaim, Marwan Kassis.  
[9]  
The individual Defendants by Counterclaim, Mazen Kassis, Marwan Kassis, Mahmoud  
Tabaja, and Joe Kassis (also known as “Youssef” Kassis) are all shareholders of MPL  
[collectively, Personal Defendants by Counterclaim]. Mazen Kassis has been the president of  
MPL since 2013.  
   
Page: 6  
[10] The Defendant by Counterclaim, Milano Baseline, is a Milano Pizzeria store located at  
2529 Baseline Road in Ottawa [Baseline Location], which opened in April 2016 and is owned  
and operated by Joe Kassis.  
[11] The Corporate Defendant/Plaintiff by Counterclaim, 6034799 Canada Inc. is a Federal  
corporation incorporated on November 6, 2002 [Corporate Defendant] by the individual  
Defendants/Plaintiffs by Counterclaim Chadi Wansa, Youssef Zaher and Yousef Nassar (also  
known as “Joe” Nassar) [collectively, Personal Defendants].  
[12] There are several noteworthy familial relationships among the parties and others. Mazen,  
Marwan and Youssef Kassis are brothers. Mahmoud Tabaja is married to a niece of Yousef  
Nassar, while Mahmoud’s brother, Mohammed Tabaja is married to Chadi Wansa’s sister. Chadi  
Wansa and Youssef Zaher are cousins, and Yousef Nassar is their uncle.  
(2)  
MILANO PIZZERIA Business and Licences Granted by MPL  
[13] MPL is an Ottawa-based company that licenses independent pizzeria owner-operators.  
When MPL was incorporated in 1996, there were at least six pizzerias or stores offering take out  
restaurant services with delivery, in various locations under the name MILANO PIZZERIA and  
the Milano Design Mark. These locations were opened by Marwan Kassis but later were sold to  
other owner-operators. By the time of trial, there were thirty-eight MILANO PIZZERIA stores  
run by independent owner-operators and licensed by MPL [MPL Licensees].  
 
Page: 7  
[14] Although the Defendants dispute the licensing aspect, I find that the above description  
represents the essence of the MILANO PIZZERIA Business, as demonstrated by the evidence,  
on a balance of probabilities. Whether the licences granted are valid is a different issue that I  
address later in the Analysis.  
[15] The licence agreements were not always in writing but were agreed to verbally or were  
understood to involve “purchasing” and “territory” in exchange for use of the name “Milano  
Pizza” or “Milano Pizzeria.” More details emerge in the written licence agreements, and in the  
parties’ live evidence, described below.  
[16] Any written agreements that may have existed prior to the mid 2000s were destroyed in a  
flood in the home of Marwan Kassis where some MPL records were kept at the time. The written  
licence agreements in evidence at trial do not cover all of the MILANO PIZZERIA stores that  
were licensed by MPL but do cover the majority of the licensed stores at the time when MPL  
commenced its action in 2017. The evidenced agreements are from 2008, 2012-2014, and 2016-  
2019. The bulk of the agreements are from 2013-2014 and 2017-2018, with only a small number  
from 2008, 2012, 2016 and 2019. None of these agreements states that it is nunc pro tunc or  
confirmatory of an existing licensing relationship. Further, Mazen Kassis does not know whether  
Marwan Kassis had any written licences for the name prior to the flood in his home.  
[17] While not identical, the written agreements are substantially similar. Some identify the  
registered trademark as “Milano Pizza,” while others refer to “Milano Pizzeria” as the registered  
trademark, which then is defined as the “Business Name” that is licensed to the named MPL  
Page: 8  
Licensee on a non-exclusive basis. Only one of the agreements (the most recent one from 2019)  
mentions the Milano Design Mark per se. The rules or terms involve purchasing branded  
products from approved distributors or suppliers, and using the Business Name within an agreed  
upon territory. No other licence would be awarded or granted for that territory without the  
licensee’s consent. Any further locations approved by the shareholders of MPL must enter into  
an agreement that replicates the licence agreements; that said, the licence agreements also  
provide, contradictorily, that the licence terms within the territory awarded by the MPL Licensee  
(and approved by MPL), shall be set at the sole discretion of the MPL Licensee.  
[18] The written licence agreements refer to “License / franchise fees and royalties” that the  
MPL Licensee (as opposed to MPL) would receive in the context of an approved second location  
in the MPL Licensee’s territory. While some MPL Licensees paid a royalty to MPL in the early  
days, royalties were eliminated when MPL received rebates from the approved supplier Tannis  
(described below). The rebates initially were earmarked for joint advertising or promotion  
campaigns but eventually became MPL’s sole source of revenue. MPL’s business model thus can  
be summed up as purchasing commitments by MPL Licensees and rebates received by MPL for  
the purchasing commitments.  
[19] Although not identified by name in the agreements, the designated suppliers are “Tannis”  
(that is, Tannis Food Distributors, now known as “Sysco”) and Pepsi. The branded products  
provided by Tannis include pizza sauce, cheese, pepperoni, and pizza boxes, but do not include  
vegetables and accounting supplies. Early branded products involved designated third party  
Page: 9  
products. MPL later developed its own line of private label products. The pizza sauce, for  
example, is sold in cans labelled with the Milano Design Mark as follows:  
[20] The written agreements also refer to a menu approved by MPL, taking the location into  
consideration, but in my view, there is insufficient evidence to demonstrate an approval process  
and little documentary evidence regarding the menus used in licensed MILANO PIZZERIA  
stores. In any event, the 2018 Summary Judgment holds that any copyright claim in the menus no  
longer is in issue (at para 153).  
[21] Pursuant to audit or review controls that, at best, can be described as “ad hoc,” Mazen  
Kassis demanded, in one instance, that a licensee remove Halal offerings from the menu. As  
well, MPL relies on its Tannis representative to bring to MPL’s attention instances of non-  
compliance with the purchasing requirement (such as noticeable reductions in purchasing).  
[22] As admitted by Mazen Kassis and substantiated by the parties’ live evidence, the MPL  
Licensees otherwise are free to operate their businesses as they see fit, including store décor,  
Page: 10  
advertising, staffing, uniforms, training, menu offerings (with limited exceptions, such as the one  
mentioned above) and pricing, and food preparation, including recipes used.  
[23] Store signage was patchwork in the early days among MPL Licensees until the Milano  
Design Mark was developed, the MPL Licensees agreed to adopt it, and Marwan Kassis changed  
the store signs for the MPL Licensees, at no cost to them, to signs displaying the Milano Design  
Mark. The MPL Licensees also used the Milano Design Mark on their menus, after receiving a  
camera-ready version for such purpose, but each location had its own menu. Every MILANO  
PIZZERIA shop was different, with different combinations of pizza and different menu items.  
As several of the witnesses testified at trial, however, including Chadi Wansa, it was beneficial  
to their businesses to be perceived as part of a larger group, or a “franchise” (even though a  
franchise – in the legal sense – has not been established to date), by using the Milano Design  
Mark.  
[24] The written licence agreements also refer to advertising and promotion campaigns from  
time to time that MPL and the MPL Licensees agree to make, but in practice, participation in the  
cooperative or joint campaigns that occurred was voluntary.  
[25] Online ordering is a significant feature of the MILANO PIZZERIA Business, with all  
MPL Licensees depending on the sales generated through the website platform at  
www.milanopizzeria.ca, including the supporting software and mechanism supplied by menu.ca  
(that is, Local Media Concepts Inc.) that enables the MPL Licensees to accept online orders.  
Page: 11  
Further details about how online ordering features in these proceedings are provided under the  
next heading.  
(3)  
Baxter Location  
[26] Since 2002, the Defendants have owned and operated a MILANO PIZZERIA store on  
Baxter Road in Ottawa [Baxter Location]. As described below, they purchased the business from  
Vahid and Farid Khorrami [Khorrami brothers]. It was an asset purchase that included the  
equipment, leasehold improvements, and goodwill. They subsequently moved to a nearby  
location, still on Baxter Road. For clarity, the term Baxter Location means the Defendants’  
business in either location.  
[27] Marwan Kassis and Youssef Kassis acquired the Baxter Location in 1992 and sold it to  
Kamal Ibrahim in 1994 who in turn sold 50% of the business to Vahid Khorrami in 1995. Vahid  
later brought in his brother, Farid with whom he ran the business, after purchasing the remaining  
50 per cent. Together, they set up the company 1252106 Canada Inc..  
[28] During the time when Vahid Khorrami owned 50% of the business with Kamal Ibrahim,  
he learned Mr. Ibrahim was paying a monthly fee for the use of the Milano name. After the  
Khorrami brothers bought the remaining 50% of the business from Kamal Ibrahim, they  
continued paying the monthly fee for a little while to use the Milano name. The Khorrami  
brothers also continued making purchases from Tannis, but otherwise they made business  
decisions for their location without any assistance from MPL during the “trial-and-error” phase  
of their business.  
 
Page: 12  
[29] Chadi Wansa approached Vahid Khorrami in 2002 about purchasing the business. Mr.  
Wansa worked at the Baxter Location before purchasing it to learn the business. Although  
initially reluctant to sell the business to Mr. Wansa, Mr. Khorrami changed his mind upon  
learning there was no MILANO PIZZERIA Business structure and agreed to sell the business to  
the Corporate Defendant.  
[30] The evidence confirms that there was no involvement of MPL in the actual sale, in terms  
of the purchase documents prepared to effect the transfer of the business to the Defendants. In  
other words, MPL was not a party to the transaction. This is consistent with the evidence of one  
of the Personal Defendants, Youssef Nassar, who previously owned a MILANO PIZZERIA store  
in Russell, Ontario. His niece’s husband, Mahmoud Tabaja, approached him in early 2000 about  
buying the operation. According to Mr. Nassar, MPL owned the building and had to sign off on  
the lease, but otherwise, it was not involved with the purchase.  
[31] No trademark clearance search was conducted when the Corporate Defendant acquired  
the business from the Khorrami brothers. Although the asset purchase included the goodwill,  
there is no mention in the Bill of Sale, and related documentation in evidence, of any trademarks.  
Further, the Bill of Sale avers that the “said goods [namely, the equipment, leasehold  
improvements and goodwill] are free and clear from any and all encumbrances.”  
[32] None of the purchase documents required the Corporate Defendant to enter into a licence  
agreement with MPL, nor had 1252106 Canada Inc. been subject to any written licence  
agreement restrictions regarding its use of the names Milano, Milano Pizza and Milano Pizzeria.  
Page: 13  
None of the written licence agreements in evidence covers the Baxter Location. From the  
Defendants’ point of view, the MILANO PIZZERIA locations are a somewhat loosely organized  
cooperative formed for the purposes of funding marketing campaigns, and for joint purchasing  
from suppliers; this is the structure that always had been in place.  
[33] Nonetheless, Tannis was a significant supplier for the Baxter Location until 2016.  
Although Mr. Wansa attempted to characterize the Defendants’ continued purchasing from  
Tannis after their acquisition of the Baxter Location as a “gesture,” I find this unpersuasive. For  
example, Youssef Nassar recalled it was possible meeting with Marwan and Mazen Kassis in  
2007 to discuss a decline in purchasing from Tannis because they could buy products cheaper  
elsewhere. After the meeting, the Defendants’ decline in purchasing from Tannis reversed.  
[34] The Defendants also complied with their territory. Mr. Nassar recalled that Vahid  
Khorrami gave them a map that was on his cooler outlining the territory for the Baxter Location.  
Mr. Nassar also recalled that he believed he had Marwan Kassis sign the map. Mr. Wansa  
testified that the map is displayed on what now is their walk-in cooler. A copy of the signed map  
was produced at trial. Further, the Defendants’ territory changed over time; Marwan Kassis  
agreed to add Centrepointe to the Baxter Location territory, in exchange for the Defendants  
agreeing to use a centralized phone number.  
[35] In 2003, Chadi Wansa acquired the domain milanopizzeria.ca and hired a web designer to  
create and set up a website. About nine locations eventually joined the Baxter Location in  
advertising on the website. When online ordering platforms came along starting in about 2010,  
Page: 14  
with Just Eat, followed by Skip the Dishes and later Uber Eats, the Baxter Location jumped on.  
All of this was done without any input or oversight by MPL. Online ordering became a  
significant part (about 25%) of the Baxter Location’s business.  
[36] From 2002 until 2013, Mr. Wansa had a friendly relationship with Mazen Kassis.  
Relations deteriorated after Mr. Kassis became the president of MPL in 2013. At that time, they  
discussed transferring the milanopizzeria.ca domain to Mr. Kassis. Mr. Wansa agreed to the  
transfer after Mr. Kassis assured him that the Baxter Location would not be removed from the  
website for any reason without Mr. Wansa’s consent. Mr. Kassis attempted to have Mr. Wansa  
sign an “Agreement of Non-Abuse of proprietary Trade name, Trademarks. [sic] and The Milano  
Pizza Brand” which references the agreed upon transfer of the domain name, among other terms,  
but there is no evidence that it ever was signed. Mr. Kassis eventually had the domain transferred  
with the assistance of a domain service provider.  
[37] Contrary to the assurances given to the Baxter Location, it was removed from the website  
and online ordering system, first in November 2015 over refusal to buy a certain size of Pepsi,  
and then permanently in February 2016 over refusal to purchase pizza boxes (that display the  
domain milanopizza.ca, a second, related domain owned by MPL). At the end of June 2016,  
MPL’s counsel sent a letter to Mr. Wansa at the Baxter Location formally terminating  
permission to use MPL’s trademarks in association with takeout restaurant services and related  
food offerings.  
Page: 15  
[38] In the meantime, the Baseline Location, owned and operated by Joe Kassis, opened in  
April 2016. Facebook listings for the Baseline Location have included the description “Milano  
Baxter – Iris Cobden.” Further, the menu for the Baseline Location in evidence contains a note  
addressed generally to the MPL customer from Mazen Kassis, President MPL. The note  
describes Joe Kassis as “one of two brothers who founded the Milano Pizza franchise.” It also  
mentions the opening of a second location in the area but leaves the reason for doing so  
unanswered. A letter to “Milano Pizza Ltd. Customer” contains similar content and, in addition,  
describes that “we are having grave issues with the location that has until now, been serving our  
Milano Pizza brand to your dining room table.” [Emphasis in original.]  
[39] As a consequence of these developments, the Defendants acquired the domain  
milanoottawa.com, as well as ottawamilano.com, and launched their own website to restore  
online ordering for the Baxter Location. In addition, from about the end of June 2016 to the  
present, the Corporate Defendant has used the trademark shown below in association with goods  
and services offered and sold by the Baxter Location:  
[New Milano Design]  
[40] Notwithstanding the adoption of the New Milano Design, the Defendants continue to use  
signs, menus and social media advertising displaying the Milano Design Mark or a substantially  
Page: 16  
similar variation of the trademark, such as with the word PIZZERIA dropped but with the design  
elements of the stylized word MILANO maintained.  
[41] Also from about the end of June 2016, Tannis no longer is a significant supplier to the  
Corporate Defendant, which, since then, has purchased pizza ingredients from other suppliers.  
Prior to at least mid-2015, Tannis was the Corporate Defendant’s primary supplier for pepperoni,  
pizza sauce and cheese.  
(4)  
Third Party PIZZERIA MILANO in Masson, QC  
[42] Dimitrios Stougianos has operated PIZZERIA MILANO in Masson, Québec for the last  
40 years. Masson is located about 30 minutes from Ottawa by car. The following is the sign on  
display in a front window of the restaurant which is open 7 days per week:  
[43] The word PIZZERIA MILANO are in the colour red, while the background colour is  
yellow. The sign also has a red border.  
 
Page: 17  
[44] In addition, Mr. Stougianos has been using the same menu for 40 years. It depicts the  
words “Pizzeria Milano Restaurant,” with the words Pizzeria and Restaurant in green letters and  
the larger word Milano in red letters, as shown below:  
[45] Mr. Stougianos testified that his restaurant sells more pizzas than other items, and he  
offers delivery to the Masson area. The name of his business, as it appears on receipts for food  
orders, is “Pizzeria Nouveau Milano.” This always has been the name of his business. When  
asked how customers refer to his business, he answered “Milano Pizzeria.”  
(5)  
Parties’ Live Evidence  
[46] Although the above paragraphs capture the more salient facts from the live evidence in  
these proceedings (and some of the documentary evidence), a summary of the testimony of the  
witnesses at trial can be found in Annex “A” below.  
(6)  
Prosecution History Regarding the Milano Design Registration  
[47] The underlying application to register the Milano Design Mark was filed on October 6,  
1997 under number 857,952 in the name of MPL and took more than five years to proceed to  
registration. During that time, MPL amended the application to include a disclaimer of the word  
PIZZERIA, and to redefine the services as “take out restaurant services, with delivery.” At no  
   
Page: 18  
point was the application amended to identify a predecessor in title, even though the claimed date  
of first use, March 1994, precedes the date of MPL’s incorporation, May 14, 1996, by more than  
two years.  
[48] MPL also responded to the objection raised and maintained by the Registrar of  
Trademarks [Registrar] in successive official actions to the registrability of the Milano Design  
Mark, under the TMA s 12(1)(d), on the basis of confusion with the registered trademark  
MILANO, registration number TMA380,997 for “restaurant and dining facilities serving Italian  
food, Western food and seafood.”  
[49] MPL’s responses to this registrability objection contained notable admissions, including  
that “‘Milano’ is actually a common trade term in association with restaurants and cafés in  
Canada.” In support, MPL pointed to the coexistence of the prior, registered trademark MILANO  
EXPRESS & Design, registration number TMA267,423, that was considered by former Justice  
Cullen in Milano Dining Room & Lounge Ltd. et al. v Milano Express (Medicine Hat) Ltd.  
(1987), 15 CPR (3d) 272 (FCTD) [Milano Dining Room]. At page 274 of the decision, Justice  
Cullen observed that “Milano,” a city in Italy, is a geographically descriptive term, and “[i]f  
merely a geographic name with no secondary meaning, it cannot be monopolized and remains in  
the public domain, by virtue of its geographical significance.”  
[50] I infer from the fact of the Milano Design Registration that the Registrar eventually  
approved, advertised, and allowed the application. The file history in evidence is incomplete in  
Page: 19  
this regard. I note, however, that there is no evidence that any third party opposed the registration  
of the Milano Design Mark.  
(7)  
Other Third Party MILANO Marks  
[51] The documentary evidence in this matter includes file histories for the following  
trademarks:  
- MILANO COFFEE HOUSE design, registration number TMA836,464, for goods and  
services that include the “operation of restaurants”;  
- MILANO FRUITERIE LOGO TRADEMARK, allowed application number 1,703,103,  
for goods and services that include “restaurant and catering services”;  
- MILANO English logo, allowed application number 1,753,787 for goods and services  
that include “restaurant and catering services.”  
III.  
Procedural History  
[52] The following is a summary of the 4-year procedural history leading to the trial of this  
matter in February 2021.  
[53] The Plaintiff filed its Statement of Claim on January 31, 2017 claiming: declaratory and  
injunctive relief against the Defendants regarding alleged infringement of the Plaintiff’s  
exclusive right to the Milano Design Mark by reason of the Milano Design Registration, passing  
off, depreciation of goodwill, and copyright infringement; an order for delivery up of offending  
material; an order requiring the Defendants to transfer to the Plaintiff the domain name  
milanoottawa.com and any other relevant domain name; damages or an accounting of profits;  
   
Page: 20  
aggravated, punitive, and exemplary damages; pre- and post-judgment interest; and solicitor-and-  
client costs. The Statement of Claim was amended just before trial on January 8, 2021.  
[54] The Defendants filed their Statement of Defence and Counterclaim on June 2, 2017,  
claiming: enumerated damages for the Plaintiff’s removal of the Defendants from the online  
ordering system found at www.milanopizzeria.ca, and additional damages for other business  
disruption and confusion caused by the Plaintiff/Defendants by Counterclaim; declaratory and  
injunctive relief regarding alleged invalidity of the Milano Design Registration pursuant to the  
TMA s 18, false and misleading statements, and descriptions that were false in a material respect,  
made by the Plaintiff/Defendants by Counterclaim contrary to the TMA s 7(a) and s 7(d)(ii), and  
passing off; an order for delivery up of offending material; aggravated, punitive and exemplary  
damages; solicitor-and-client costs; and pre- and post-judgment interest. The Statement of  
Defence and Counterclaim was amended on July 28, 2017 and again shortly before trial on  
January 5, 2021.  
[55] The Plaintiffs’ Reply and Defence to Counterclaim was filed on August 11, 2017 and  
amended on January 8, 2021. The Defendants’ Reply to Defence to Counterclaim was filed on  
August 24, 2017.  
[56] The parties’ amendments to their pleadings flow, to a large extent, from the 2018  
Summary Judgment, discussed in more detail below.  
IV.  
2018 Summary Judgment  
 
Page: 21  
[57] As noted, both sides of the dispute moved for summary judgment. The Defendants sought  
to have the Plaintiff’s action dismissed, while the Plaintiff sought summary judgment in its  
favour on all issues, except the copyright claim. Justice Mactavish found that there were no  
genuine issues for trial regarding the impugned registrability of the Milano Design Registration  
under the TMA s 18(1)(a), and regarding the Plaintiff’s copyright claim. The 2018 Summary  
Judgment issued for the Plaintiff on the first issue, but favoured the Defendants on the second  
issue resulting in the partial dismissal of the Plaintiff’s action to the extent that it was framed in  
copyright (at paras 6 and 155-156). The motions otherwise were dismissed (at paras 7 and 157).  
[58] In her analysis of the registrability issue, Justice Mactavish noted that the “Plaintiff  
specifically disclaimed the use of the word ‘pizzeria’ in relation to the MILANO Design Mark,  
and it does not now claim ownership of the word ‘Milano’ per se, as a trade-mark or  
otherwise” [emphasis added]: 2018 Summary Judgment, above at para 95. In her view, the  
distinctiveness of the Milano Design Mark, as a whole, resides in the combination of the words  
“Milano” and “Pizzeria”, coupled with the design elements, namely “the layout and font of the  
words, as well as the pizza slice appearing in the letter ‘O’ of ‘Milano’, which is the most  
distinctive element of the MILANO Design Mark”: 2018 Summary Judgment, above at paras 96  
and 99.  
[59] In reaching this distinctiveness conclusion in the context of the registrability analysis,  
Justice Mactavish referred to the decision in Milano Dining Room, and noted the combination of  
the words “Milano” and “Express,” coupled with a train logo [Milano Express Mark] which  
Page: 22  
mark was upheld. Although not stated expressly, I find that Justice Mactavish impliedly  
analogized the format of the Milano Design Mark here, to that of the Milano Express Mark.  
[60] In concluding that there was a genuine issue for trial in respect of Plaintiff’s passing off  
claim (and others), Justice Mactavish noted that the existence of a registered trademark is a  
complete defence to an action for passing off: 2018 Summary Judgment, above at para 133.  
[61] In dismissing the Plaintiff’s copyright claim, Justice Mactavish noted the lack of  
evidence establishing the creation and provenance of the Milano Design Mark. In particular,  
even assuming that Marwan Kassis authored the Milano Design Mark, evidence of which was  
considered “vague, non-specific, inconsistent and incomplete,” there was no evidence he ever  
assigned his alleged copyright to the Plaintiff: 2018 Summary Judgment, above at paras 148-150.  
The Plaintiff thus failed to establish any enforceable copyright rights in the Milano Design Mark.  
Justice Mactavish also found at para 153 that the Plaintiff failed to establish enforceable rights in  
the menus.  
V.  
Dispute and Issues  
[62] Both the Plaintiff and the Defendants allege that the activities of the other party(ies) have  
caused confusion in the marketplace and harmed their respective businesses. While the parties  
agree that customers in the Ottawa area have come to know the MILANO PIZZERIA operations  
of the independent owner-operators as, interchangeably, MILANO, MILANO’S, MILANO  
PIZZA, MILANO’S PIZZA, and MILANO PIZZERIA, neither the Plaintiff nor the Defendants  
 
Page: 23  
presented direct evidence of the perceptions of their customers, or of other third parties, in this  
regard.  
[63] Further, for their part, the Defendants challenge whether MPL or any predecessor in title  
has licensed any of the MILANO PIZZERIA owner-operators. A key issue of the dispute, in my  
view and as discussed further below, is whether the Plaintiff has demonstrated sufficient  
controlled licensing within the meaning of subsection 50(1) of the TMA. A determination on this  
point, in the larger context of distinctiveness, is a necessary antecedent to a consideration of the  
validity of the Milano Design Registration, which the Defendants challenge in their  
counterclaim.  
[64] Based on the parties’ pleadings and the above factual background, I find that the liability  
phase of the trial raises the following issues:  
A. With respect to the alleged invalidity of the Milano Design Registration:  
(a)  
Whether, as of the date of the Defendants’ counterclaim,  
namely June 2, 2017, the Milano Design Mark was  
distinctive of MPL in association with take out restaurant  
services, with delivery, and if not, whether the  
registration is invalid under the TMA s 18(b) for at least  
one of two possible reasons, namely:  
(i)  
whether MPL’s licensing program is valid under the  
TMA s 50(1) such that use of the Milano Marks by  
the MPL Licensees enures to MPL’s benefit, and if  
not, whether this renders the Milano Marks non-  
distinctive; and/or  
(ii)  
whether the co-existence of other third party  
MILANO marks/operations, such as PIZZERIA  
MILANO of Masson, QC, renders the Milano Marks  
non-distinctive;  
Page: 24  
(b)  
(c)  
Depending, in part, on whether MPL’s licensing  
program is valid, whether MPL abandoned or intended  
to abandon the Milano Design Mark, as contemplated by  
the TMA s 18(c);  
Whether the Milano Design Mark was used under  
licence at the time the application for its registration was  
filed on October 6, 1997 or its claimed first use date of  
March 1994, failing which the registration would be  
invalid under the TMA s 18(d);  
(d)  
Whether the Milano Design Registration is invalidated  
because the claimed first use date of March 1994  
precedes the incorporation date of May 14, 1996 of MPL  
but the registration does not identify any predecessor in  
title;  
(e)  
(f)  
Whether the Corporate Defendant’s predecessor in title  
used the Milano Design Mark prior to the claimed first  
use date of March 1994;  
Whether the lack of a disclaimer of the word MILANO  
in the Milano Design Registration invalidates the  
registration, or whether, alternatively, the registration  
can be amended to incorporate a disclaimer of the word  
MILANO in addition to PIZZERIA; and  
(g)  
Whether MPL has enforceable rights in the registered  
Milano Design Mark (and/or the Milano Word Marks)  
to sustain its claims that the Defendants have  
contravened the TMA sections 19, 20, 22, 7(b) and/or  
7(c);  
B. Whether the Defendants have made any unauthorized use of the  
registered Milano Design Mark, either before or after any alleged  
licence or permission to use it ceased in June 2016, in contravention of  
the TMA s 19;  
C. Whether the New Milano Design Mark and the Milano Word Marks, as  
used by the Defendants, are confusing with the registered Milano  
Design Mark, such that their unauthorized use constitutes infringement  
under the TMA s 20;  
D. Whether the Defendants’ unauthorized use of the Milano Marks and the  
New Milano Design Mark has depreciated MPL’s goodwill in  
registered the Milano Design Mark in contravention of the TMA s 22;  
Page: 25  
E. Whether the Defendants, by using the Milano Marks and the New  
Milano Design Mark without MPL’s authorization, have passed off  
their goods and services as and for those of MPL in contravention of  
the TMA sections 7(b) and 7(c);  
F. Whether the Personal Defendants should be liable for any unlawful acts  
of the Corporate Defendant;  
G. Whether the actions and communications of MPL and the Personal  
Defendants by Counterclaim to the Defendants’ third party suppliers,  
service providers, and/or their customers, on the milanopizzeria.ca  
website and elsewhere, constitute:  
(a)  
making false or misleading statements tending to  
discredit the business, goods or services of a competitor, in  
contravention of the TMA 7(a);  
(b)  
directing public attention to their goods, services or  
business in such a way as to cause or be likely to cause  
confusion in Canada, at the time they commenced so to direct  
attention to them, between their goods, services or business and  
the goods, services or business of the Defendants, in  
contravention of the TMA s 7(b);  
(c)  
passing off their goods or services as and for those  
ordered or requested, in contravention of the TMA s 7(c);  
(d)  
making use, in association with goods or services, of any  
description that is false in a material respect and likely to  
mislead the public as to their geographical origin, in  
contravention of the TMA s 7(d)(ii); and  
H. Whether the Defendants have used the trademark MILANO BAXTER  
and acquired any reputation or goodwill in said trademark.  
VI.  
Relevant Provisions  
[65] See Annex “B” below.  
VII. Analysis  
   
Page: 26  
[66] I begin my analysis by noting that the version of the TMA that existed prior to the  
implementation of substantial changes on June 17, 2019 is applicable to my consideration of this  
matter.  
A.  
Is the Milano Design Registration Invalid?  
[67] For the reasons explained below, I find Defendants have met their onus of establishing,  
on a balance of probabilities, that the Milano Design Mark is not distinctive and, hence, the  
Milano Design Registration is invalid under the TMA s 18(1)(b): Kirkbi AG v Ritvik Holdings  
Inc., 2003 FCA 297 at para 80 (), [2004] 2 FCR 241; aff’d 2005 SCC 65. There are two  
principal reasons for finding non-distinctiveness.  
[68] First, regardless of the existence of oral versus written licence agreements, MPL has not  
satisfied the onus on it to establish that it exercises sufficient control over the services performed  
(and goods sold) by the MPL Licensees such that MPL would benefit from the deeming  
provision in the TMA s 50(1): Live! Holdings, LLC v Oyen Wiggs Green & Mutala LLP, 2020  
FCA 120 at para 36. In other words, the lack of control means that any use, advertisement or  
display of the Milano Design Mark (and the Milano Word Marks, for that matter) by the MPL  
Licensees does not enure, and has not enured, as of the date when the Plaintiff commenced its  
action, or as of the date of the Defendants’ counterclaim, to the Plaintiff’s benefit.  
[69] I add that, given the proliferation and coexistence of independently owned and operated  
MILANO PIZZERIA locations, the use, advertisement or display of the Milano Design Mark  
 
Page: 27  
(and the Milano Word Marks) has not enured to their benefit either in the circumstances. I  
address the latter point further below in the context of the Defendants’ counterclaim.  
[70]  
Second, the lengthy coexistence of PIZZERIA MILANO in Masson, QC undermines the  
distinctiveness MPL otherwise might have enjoyed in the Milano Design Mark, and the Milano  
Word Marks, were they validly licensed.  
(a)  
Invalidity under the TMA s 18(b) for lack of distinctiveness  
(i)  
Insufficient controlled licensing under the TMA s 50(1)  
[71] I am not satisfied that the Plaintiff has established sufficient controlled licensing in  
respect of the character or quality of the services “take out restaurant services, with delivery” in  
association with which the Milano Design Mark is used, advertised or displayed, so as to benefit  
from the deeming provision under the TMA s 50(1). This case is less about inconsistent usage of  
the Milano Design Mark per se, although that has occurred as well (for example, by replacing  
PIZZERIA with milanopizza.ca). Rather, the focus of the analysis is the MILANO PIZZERIA  
Business and the licences granted by MPL.  
[72] The Defendants/Plaintiffs by Counterclaim characterize this case as being “unclear what  
was said and done, who said it, when was it said, and who agreed to what.” While I do not  
disagree, I find that as a result, there has been a significant focus in the trial of this matter on  
form over substance. The lack of formal documentation in the early years of the MILANO  
PIZZERIA Business has resulted in a “he said, he said” situation (i.e. Mazen Kassis on the one  
   
Page: 28  
hand, and Chadi Wansa on the other hand) regarding the years prior to the implementation of a  
more formulaic licensing program essentially in the mid 2010s.  
[73] In my view, this case instead can be characterized as a cautionary tale regarding the  
difficulties of proving, with the passage of time, both the subsistence and terms of an oral licence  
arrangement. Further, as shown by some of the witnesses, there is a tendency of “lay” people (in  
the sense of those without legal training but with some legal advice) to discount or deny the  
existence of a licence or “contractual” terms, absent a formal written agreement.  
[74] In addition, I find that the background context described by Justice Mactavish in the 2018  
Summary Judgment has not been clarified significantly through live testimony. That said, in my  
view, the evidence at trial points, on a balance of probabilities, to the operation of the Baxter  
Location by the Khorrami brothers, with an unwritten understanding of permission (which is  
what a licence is, in essence) to use the “Milano’s name” (including the Milano Design Mark), in  
exchange for purchasing, respecting territory, and initially, a royalty payment.  
[75] The above is borne out by Vahid Khorrami’s live testimony regarding his understanding  
of the applicable “ground rules” about Tannis (i.e. purchasing from a designated supplier) and  
respecting the territory assigned to the Baxter Location. He also testified on re-examination that  
he was paying a fee to Marwan Kassis for the use of the Milano’s name. It is not determinative,  
in my view, that there was no formal MILANO PIZZERIA Business structure, that the licence  
agreements were not more precise, for example, about what was registered, that the parties to the  
Page: 29  
licence agreements, at best, had just a general understanding of the terms, or that compliance was  
imperfect. The parties and their witnesses are business people, not lawyers.  
[76] Further, when testifying about his acquisition and operation of the Montreal Road  
location, Vahid Khorrami described a discussion he had with Marwan Kassis where he  
confirmed that he would “try to buy most of the stuff from Tannis still, and I said to respect that  
agreement verbally we had in the beginning, and I respect that, and I just continue that.”  
[Emphasis added.] Although Mr. Khorrami expressed reluctance to buy certain things that were  
not top quality, I find that, on a balance of probabilities, Mr. Khorrami’s testimony overall points  
to an understanding that there was an oral licence arrangement in place regarding purchasing and  
territory in exchange for permission to use the Milano Marks.  
[77] I find the fact that MPL was not involved formally in the sale of the Baxter Location  
from the Khorrami brothers to the Defendants or in the sale of other MILANO PIZZERIA  
locations, and together with MPL’s general “hands off” approach to the MPL Licensees,  
underscore the “looseness” of the licensing arrangements. Ultimately, the lack of control  
exercised by MPL, as shown by the evidence, negatively affects the distinctiveness of the Milano  
Design Mark (and the Milano Marks generally), as I explain below.  
[78] The TMA s 50(1) deems the use, advertisement or display of a trademark by an  
authorized licensee to be that of the trademark owner if the owner maintains, under licence,  
direct or indirect control of the character or quality of the goods or services in association with  
which the trademark is used, advertised or displayed. A written licence agreement is not a  
Page: 30  
requirement to establish licensed use of a trademark; evidence of the owner’s control over use can  
point to the existence of a licensing arrangement: Wells' Dairy, Inc. v U L Canada Inc., 2000  
15538 (FC) at para 38.  
[79] I note that the rebuttable presumption contemplated by the TMA s 50(2) does not apply in  
the circumstances because no evidence was adduced that public notice was given that MPL is the  
owner of the Milano Design Mark and that it is used under licence.  
[80] Depending on the circumstances, a well-structured franchise arrangement can involve the  
requisite degree of control to satisfy the TMA s 50(1): Boston Pizza International Inc. v Boston  
Chicken Inc., 2001 FCT 1024 () at paras 56-57. That said, “…the fact that a franchisor  
has some control over its franchise is not sufficient on its own to show control over the character  
and quality of the services. Each case, however, has its own facts and despite the differences  
between the types of business relationships, the owner of the trade-mark must be able to  
evidence control over the licensee to meet the requirement under s. 50”: Fox on Canadian Law  
of Trade-marks and Unfair Competition, 4th ed., Gill, A. Kelly; Jolliffe, R. Scott; Fox, Harold G.  
(Toronto: Carswell, c2002-) (looseleaf) [Fox on Trade-marks], citing (at page 15-24, footnote  
96) Realestate World Services (1978) Ltd. v Firstline Trust Co. (1997), 77 CPR (3d) 406  
(TMOB).  
[81] Notwithstanding the references to “License/franchise fees and royalties” in the licence  
agreements, and the possibility of MPL making “an application to register Milano Pizzeria as a  
franchise” in at least one of the licence agreements in evidence, MPL simply is not a “franchise”  
Page: 31  
as this term is defined in section 1 of the Arthur Wishart Act (Franchise Disclosure), 2000, SO  
2000, c 3. Among other things, the MPL has not established that it exercises significant control  
or provides significant assistance, directly or indirectly, to MPL Licensees. The issue here,  
however, is whether MPL exercises sufficient control within the meaning of the TMA s 50(1) to  
maintain the Milano Design Registration.  
[82] The Plaintiff argues that a licensee’s “desired autonomy in the day-to-day administration  
of its affairs does not… equate with an abdication of control”: Stamos v Belanger, 1994  
7426 (ON SC) [Stamos] at para 64. As Justice Walker observed more recently, “[t]he lack of  
control by the Plaintiff of the Defendants’ day-to-day business operations is not fatal to the  
existence of a section 50 license”: Corey Bessner Consulting Inc. v Core Consultants Realty Inc.,  
2020 FC 224 [Corey Bessner] at para 78. While I do not disagree, I find that this is not of much  
assistance to the Plaintiff here in establishing sufficient control with regard to the MPL  
Licensees. Further, the unique circumstances at play in Stamos and in Corey Bessner make these  
decisions distinguishable, in my view, from the matter before me.  
[83] Stamos involved a dispute among members and former members of an international  
union and a local union, and a motion for an interim injunction to restrain the defendants from  
using certain trademarks. The Court in that case found compliance with the TMA s 50(1) and a  
strong prima facie case of breach of contract by the defendants, having regard to the international  
union’s constitution and the monitoring the international union undertook of all activities of its  
locals.  
Page: 32  
[84] Corey Bessner involved a business arrangement between a trademark owner and two  
colleagues that fell apart. While the proposed business alliance included a term that the three  
business partners would own an equal share of the intellectual property, the trademark owner did  
not agree to the proposal and the business alliance was not formalized in writing. While the  
trademark owner had been prepared to move forward with the business alliance to see how it  
proceeded, it was short-lived, lasting about 1½ years. Further, the trademark owner did not agree  
to co-ownership or assignment of the trademarks at issue. Rather, the trademark owner  
maintained physical control over the trademarks through control of the relevant website, email  
and social media accounts. The control of the trademarks was a determinative factor in the  
Court’s finding of a licence under the TMA s 50.  
[85] In the case before me, I find that MPL woke up late to the importance of the Internet and  
online ordering to the MILANO PIZZERIA Business. I further find credible Chadi Wansa’s  
testimony that he acquired the domain milanopizzeria.ca, developed a website with the help of a  
website designer, hopped on the new online ordering platforms of the day, and encouraged the  
participation of other locations, all without input or oversight by MPL for at least a decade from  
2003 to 2013. Relations between the parties started to deteriorate when MPL belatedly sought to  
control the domain, the website and eventually social media for the MILANO PIZZERIA  
Business.  
[86] This element of control was solidified in the hands of MPL just under two years before  
the Defendants initiated their counterclaim challenging the distinctiveness of the Milano Design  
Registration. Although, in my view, online ordering is the Internet equivalent of a centralized  
Page: 33  
telephone ordering system (which the MPL Licensees rejected years ago), I find it was “too little  
too late.” The Plaintiff has maintained consistently throughout the action that the essential terms  
of the licence are “purchasing” and “territory.” Online ordering is not mentioned in the written  
licence agreements. Nor is it mentioned or inherent in the services “take out restaurant services,  
with delivery” listed in the Milano Design Registration. This is not surprising given that the  
underlying application to register the Milano Design Mark was filed in 1997, in the early days of  
the Internet and long before the adoption of online ordering in the MILANO PIZZERIA  
Business. In addition, the evidence does not show that all of the independent owner-operators are  
obligated or have chosen to participate.  
[87] The authors of Fox on Trade-marks posit (at page 15-24) that there are two main issues  
regarding the sufficiency of control – the type of control and whether it actually is exercised –  
and they point to a number of cases where control is in issue. They suggest that a cautious  
approach would be to “have the license specifically provide for the owner’s control over the  
character and quality of the wares or services” and “the right to regular inspections, which the  
owner would actually exercise”: Section 15.3(c)(ii) at pages 15-25 – 15-26. The licence  
agreements granted by MPL do not contain either such provision.  
[88] This Court has held that the lack of a clause providing for control of the quality of the  
wares in a licensing agreement, plus a lack of evidence that the owner exercised direct or indirect  
control of the use of the mark by the licensee, and the absence of any other new material  
evidence, was sufficient to reject an appeal from the Registrar’s decision expunging the  
trademark registration in issue: Eclipse International Fashions Canada Inc. v Cohen, 2004 FC  
Page: 34  
617 at para 17. In Tucumcari Aero, Inc. v Cassels, Brock & Blackwell LLP, 2010 FC 267,  
(former) Justice Barnes found that a right of annual inspection and a right to terminate the  
applicable licence agreement in the case of deficient products were indicative of sufficient  
control as required by the TMA s 50(1).  
[89] While the written licence agreements with the MPL Licensees provide MPL with the  
right to terminate in the event of breach, and obligate the MPL Licensees to sell products and  
menu items approved by MPL, they do not contain any right of inspection. In addition, there is  
little evidence that MPL regularly inspects or approves products and menu items (apart from the  
one example of requesting the removal of Halal items from a menu).  
[90] Many of the cases cited by the authors of Fox on Trade-marks deal with the adequacy of  
a corporate or similar relationship between the trademark owner and the licensee(s) in the  
context of controlled licensing. I find the following case, however, provides a useful discussion  
germane to the issue here of controlled licensing.  
[91] In Flansberry Menard & Associates v RB Music Ltd. (2000), 7 CPR (4th) 569 (TMOB)  
[Flansberry], the Trademarks Opposition Board found that the registrant failed to demonstrate  
the requisite section 50 control, and ordered the challenged registration expunged for non-use  
under the TMA s 45. In considering whether the registered trademark BACHMAN-TURNER  
OVERDRIVE was used during the relevant period with pre-recorded tapes, the Opposition  
Board Member found that while the trademark owner likely would have had control over the  
character and quality of the band’s master recordings, it failed to demonstrate how it exercised  
Page: 35  
control over the character and quality of the finished products which display the registered mark  
(that is, the tapes, records or compact discs produced from the master recordings). The Member  
noted specifically that the licence agreement did not contain a right to inspect and control the use  
of the trademark to ensure that it was used properly, nor to obtain samples of the goods produced  
in connection with the trademark.  
[92] By analogy, I find that while MPL may control the character and quality of the branded  
pizza ingredients - pepperoni, cheese and sauce - that it requires the MPL Licensees to purchase  
from Tannis, in addition to the pizza boxes, MPL for the most part has failed to exercise control  
over the finished product, the pizza itself, and other menu items.  
[93] For example, Mazen Kassis testified that “none of the other ingredients would affect the  
taste of the pizza more than the sauce would” and agreed with counsel that “by requiring your  
licensees to all use the Milano sauce, then that essentially makes – the key to all of their pizza all  
the same across all operators.” On the other hand, Yousef Nassar testified that the dough is the  
most important aspect of pizza, while other witnesses testified, including Chadi Wansa, Vahid  
Khorrami and Rania Yehia (a former owner-operator of the Montreal Road Location, and whose  
father is Chadi Wansa’s father-in-law), that they were free to use their own recipes. In other  
words, there was nothing to prevent the taste of the sauce being altered by the addition of other  
ingredients, such as herbs and spices, or by its interaction in the cooking process with other  
ingredients, significantly the dough. Nor does MPL appear to have monitored in any meaningful  
way, such as through periodic or regular sampling, the finished product, that is, the pizzas or any  
other food products on the menus of the MPL Licensees.  
Page: 36  
[94] Mr. Kassis also testified that “the entire business is fluid” and that “licensees come to  
Milano, because they are relaxed licence agreements with few requirements.” [Emphasis  
added.] Further, Mr. Kassis confirmed that there are no uniforms. Additions to the menu are  
allowed (such as Kemptville Pizza or Manotick Special) because “it won’t affect the larger mark  
of company.” The control over the quality of the service being provided, in “the early days,  
would have come through a supplier… a rep that would work for the distributor… by the  
customers…, and by the licensees themselves.” Mostly, however, controlling the service of a  
territory is out of MPL’s hands once the territory has been assigned; the MPL Licensees would  
have to deal with territorial disputes on their own.  
[95] While MPL encourages higher pricing, it is neither compelled, nor uniform. Instead,  
MPL Licensees have control over their pricing. MPL does not audit sales - Mazen Kassis  
testified that he just goes by experience or makes an educated guess. According to Mr. Kassis,  
apart from territory and purchasing, the MPL Licensees (that is, the MILANO PIZZERIA  
owner-operators) essentially control their own operations.  
[96] Based on the testimony of Mazen Kassis and having regard to the written licence  
agreements, apart from initially assigning a territory to a licensee, I am not persuaded that MPL  
actually controls the territory, a key aspect of MPL’s licensing program. This is a problem for  
MPL because “…s. 50(1) of the Act requires the owner of the mark, and not the licensed  
company, to have direct or indirect control of the character or quality of the wares or services in  
order for the use of a trade-mark by a licensee to be deemed to be used by the owner”: Facton  
Ltd v Diplomate Watch of Canada, 2012 TMOB 142 () at para 59. An exception might  
Page: 37  
occur where a licensing arrangement involves the delegation of control from the trademark  
owner to a “head” licensee or franchisee who in turn exercises control on behalf of the trademark  
owner (i.e. indirect control) over sublicensees or subfranchisees. That is not the case here,  
however.  
[97] The Plaintiff argues that the territories were assigned to optimize the speed and quality of  
delivery of the ordered food and, hence, represents an element of control of the Milano Design  
Registration services (that is, “take out restaurant services, with delivery”). I am not satisfied,  
however, that this is meaningful control in the sense of sufficiency. First, territories are different  
sizes. Vahid Khorrami testified, for example, that the Montreal Road location was too large to be  
served effectively by only one MILANO PIZZERIA store. Youssef Nassar had a similar  
complaint regarding the Russell location. Mr. Nassar also testified that timing of delivery is a  
key factor. Second, in the case of orders that are picked up, the size of the territory may have  
little, if any, impact on the speed with which an order is filled.  
[98] Third, the evidence establishes that the MPL Licensees have control over the hiring and  
training of drivers. No evidence was adduced on the speed at which delivery drivers drive or the  
routes they take (i.e. the timing of delivery mentioned by Mr. Nassar). Even assuming they drive  
at posted speed limits, this is but one factor in the overall timing of order fulfillment. For  
example, the MPL Licensees also have control over their operations. In other words, they control  
how the food is prepared, including the timing of preparation. They also control staffing and,  
thus, whether they have sufficient staff to meet demand at any given time and how quickly they  
do so.  
Page: 38  
[99] All of these factors, over which MPL exercises little to no control, are significant  
determinants, in my view, of the character or quality of the services, including the finished pizza  
products and the speed at which or how food orders are filled. As noted in an earlier case, “[n]ot  
only is the provision in that agreement as to the character of the hamburgers to be sold under the  
agreement of the most superficial and unrestrictive character, but there is no provision for  
supervision or control and the evidence indicates that actual control concerning ‘nature and  
quality of the goods’ [or services, here] is practically speaking, non-existent”: Robert C. Wian  
Enterprises, Inc. v Mady, [1965] 2 Ex. C.R. 3 at p 15.  
[100] The Plaintiff’s counsel objected, during Vahid Khorrami’s examination in chief, to the  
relevance of the line of questioning regarding the sale of the Baxter Location from the Khorrami  
brothers to the Defendants, having regard to the relevant date for assessing the distinctiveness of  
the Milano Design Mark (i.e. as of the date of the Defendants’ Counterclaim dated June 2, 2017).  
Although there is a difference of about 15 years, apart from the development of private label  
branded pizza ingredients and the increased utilization of written licence agreements, there is  
little evidence that much else has changed over the intervening years in respect of the actual  
exercise of control by MPL over the character or quality of the applicable services. I base this  
observation on the testimony of several of the independent owner-operators of MILANO  
PIZZERIA stores. Further, as mentioned above, online ordering (and MPL’s belated control) is  
not a significant factor in this case, in my view.  
[101] I therefore conclude that the insufficient control exercised by MPL over the character or  
quality of the services, including the finished food products, notwithstanding oral or written  
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licence agreements with most of the MPL Licensees, renders the Milano Design Mark non-  
distinctive, and hence, the Milano Design Registration invalid, as of the date of the Defendants’  
counterclaim, namely June 2, 2017.  
[102] As a consequence, not only is the Milano Design Mark non-distinctive of MPL, its  
concurrent use by the MPL Licensees renders the Milano Design Mark non-distinctive of any  
one of them as well, in my view, particularly in the absence of any direct evidence of acquired  
distinctiveness by either side to this dispute, notwithstanding lengthy use (about 20 years or  
more) of the Milano Design Mark and one or more of the Milano Word Marks. I explain the  
implications of the latter result further below in connection with the Defendants’ counterclaim.  
This consequence does not apply, however, to the design elements of the New Milano Design.  
(ii)  
Lengthy co-existence of PIZZERIA MILANO in Masson, QC  
[103] I find the coexistence of PIZZERIA MILANO in Masson, Québec, undermines any  
acquired distinctiveness MPL otherwise might have enjoyed in the Milano Design Mark, and the  
Milano Word Marks, by reason of the TMA s 50(1), were it not for the uncontrolled licensing  
that occurred.  
[104] Justice Mactavish found, as noted above, that the distinctiveness of the Milano Design  
Mark resides in the combination of the words “Milano” and “Pizzeria”, coupled with the design  
elements: 2018 Summary Judgment, above at para 96. This finding in my view relates to the  
inherent distinctiveness of the Milano Design Mark on its face, rather than possible acquired  
distinctiveness, which is not mentioned in the registrability analysis.  
 
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[105] I find, however, that the Milano Design Mark is an inherently weak mark, with the word  
PIZZERIA specifically disclaimed, and rights in the word MILANO disavowed by MPL (i.e.  
“‘Milano’ is actually a common trade term in association with restaurants and cafés in Canada”),  
and the design of a slice of pizza descriptive of “take out restaurant services, with delivery”  
where the featured, finished product is pizza. (The lack of an express disclaimer of MILANO in  
the Milano Design Registration is discussed below.)  
[106] Further, I find that any distinctiveness that resided in the combination of the words  
MILANO PIZZERIA is extinguished by the coexistence, and prior use, of PIZZERIA MILANO,  
by Dimitrios Stougianos for about 40 years. The fact that the words are reversed does not add  
any meaningful, distinguishing feature between these marks or names; they mean essentially the  
same thing, and are similar in sound and appearance: Made in Nature, LLC v Pharmavite LLC,  
2022 TMOB 21 () at para 31; Allan Beverages Ltd. v Canada Dry Ltd., 1974 CarswellNat  
489, 15 CPR (2d) 86 at 87-88 (Registrar of Trade Marks).  
[107] In addition, the Milano Design Mark and the PIZZERIA MILANO sign used by Mr.  
Stougianos in the front window of his restaurant, involve the same eye-catching colours of red  
and yellow.  
[108] The Plaintiff sought to rely on the fact that Masson, QC is approximately 30 minutes  
away from Ottawa by car. I agree with the Defendants, however, that the PIZZERIA MILANO  
in Masson, QC is closer to Ottawa than a number of the MILANO PIZZERIA stores, including  
those located in Alfred, Almonte, Arnprior, Beachburg, Bourget, Casselman, Cobden, Cornwall,  
Page: 41  
Kemptville, Pembroke, Perth, Renfrew and Smith Falls (according to the list, in evidence, of  
MILANO PIZZERIA locations as of August 2018). As the Supreme Court has held, “for the  
owner of a registered trade-mark to have exclusive use of the trade-mark throughout Canada,  
there cannot be a likelihood of confusion with another trade-mark anywhere in the country”:  
Masterpiece Inc. v Alavida Lifestyles Inc., 2011 SCC 27 at para 31 (), [2011] 2 SCR 387.  
[109] During the trial, Mazen Kassis admitted he is aware that there are other restaurants in  
Ontario and Canada that use MILANO in their name. Apart from this action, and an action  
against Milano City Pizza in respect of which MPL obtained default judgment (dated June 23,  
2016 on Court File No. T-43-16), there is no other evidence that MPL has a program for policing  
the Milano Design Mark, including in respect of the PIZZERIA MILANO. For example, the  
written licence agreements with the MPL Licensees do not contain any provision obligating the  
licensee to bring to MPL’s attention any unauthorized, confusing uses of the Milano Design  
Mark or the Milano Word Marks by a third party.  
[110] In addition, regarding the third party marks evidenced by the Defendants, namely  
MILANO COFFEE HOUSE design, registration number TMA836,464, MILANO FRUITERIE  
LOGO TRADEMARK, allowed application number 1,703,103, and MILANO English logo,  
allowed application number 1,753,787, there is no evidence that MPL sought to oppose them. I  
find, otherwise, that this evidence is of little assistance to the Defendants in their defence of the  
main action. In particular, there is an insufficient number of registered and allowed trademarks to  
draw any inferences regarding the state of the marketplace in respect of the asserted prevalent  
use of MILANO for restaurant services: Tokai of Canada Ltd v Kingsford Products Company,  
Page: 42  
LLC, 2021 FC 782 at paras 56-57. I give greater weight in this regard to the Plaintiff’s admission  
made during the processing of the application underlying the Milano Design Registration to the  
effect that “Milano” is a common trade term in association with restaurants and cafés in Canada.  
(b)  
Invalidity under the TMA s 18(c) because of abandonment  
[111] I am not persuaded that the Defendants have established abandonment of the Milano  
Design Mark. There are two requirements to show abandonment – first, that the trademark no  
longer is in use in Canada, and second, that the owner intended to abandon the trademark:  
Diageo Canada Inc. v Heaven Hill Distilleries, Inc., 2017 FC 571 at para 43.  
[112] MPL itself does not use the Milano Design Mark for “take out restaurant services, with  
delivery” and has not done so for many years. It does use the Milano Design Mark, however, in  
association with private label pizza sauce. MPL asserts that pepperoni and cheese are similarly  
private labelled; I note, however, that there are no images in evidence of the packaging for these  
food products.  
[113] Further, while I have found a lack of distinctiveness from insufficiently controlled  
licensing, the Plaintiff’s licensing program, imperfect as it is, does not support an intention to  
abandon the Milano Design Mark, in my view. I thus find that the two requirements for  
establishing abandonment have not been met.  
(c)  
Invalidity under the TMA s 18(d) because of non-entitlement  
   
Page: 43  
[114] Given my finding of invalidity for lack of distinctiveness, the question of whether the  
Milano Design Mark was used under licence at the time the application for its registration was  
filed on October 6, 1997 or as of its claimed first use date of March 1994 for the most part no  
longer is relevant. I agree with the Plaintiff, however, that the TMA s 17(1) operates to preclude  
the Defendants from succeeding on this ground of invalidity.  
[115] I note that the evidence shows the Baxter Location was acquired in 1992 by Marwan and  
Youssef Kassis, and they owned it until 1994 when they sold it to Kamal Ibrahim. As observed  
by Justice Mactavish, “Marwan Kassis (one of the Defendants by Counterclaim) identifies  
himself as the founder of the Milano pizzeria business”: 2018 Summary Judgment, above at para  
13. Although Marwan and Youssef Kassis were shareholders of MPL, there is no evidence about  
whether their initial interests in the MILANO PIZZERIA Business flowed to MPL.  
[116] By the time the application to register the Milano Design Mark was filed in 1997, the  
Khorrami brothers owned the Baxter Location, through their numbered company, and as I have  
found, they used the Milano Design Mark with permission (that is, under an oral licence), in  
exchange for purchasing and respecting territory.  
[117] Further, while the Bill of Sale for the purchase of the Baxter Location by the Defendants  
mentions goodwill, it is silent about any trademarks, trademark rights, trade names or other  
intellectual property, as noted by Justice Mactavish: 2018 Summary Judgment, above at para 73.  
In light of the TMA s 48(1), however, I am not prepared to infer that trademarks follow goodwill.  
Subsection 48(1) provides that registered or unregistered trademarks are transferrable, either with  
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or separately from the goodwill of the business. In other words, subsection 48(1) recognizes a  
commercial reality that a business and its goodwill can be sold with or without the trademark(s)  
that the business used.  
[118] Consequently, while the Defendants in my view are the successors to the business  
operated by the Khorrami brothers at the Baxter Location, I find that they are not the successors  
to any trademark rights that would permit them, under the TMA s 17(1), to challenge the  
Plaintiff’s entitlement to the Milano Design Mark, notwithstanding that the Milano Design  
Registration is more than five years old: Havana House Cigar & Tobacco Merchants Ltd. v  
Skyway Cigar Store, 1998 7773 (FC) at para 61; varied (in other respects) 1999  
9100 (FCA).  
(d)  
Invalidity because claimed first use date precedes incorporation date  
[119] There is no question that under the TMA, as it existed prior to June 17, 2019, this would  
have been a valid basis for opposing a trademark application, with regard to paragraphs 38(2)(a)  
and 30(b). The law is less clear, however, whether a registration could be expunged under the  
TMA s 18 on that basis (i.e. non-compliance with section 30 which is not mentioned in section  
18, unlike the former paragraph 38(2)(a)).  
[120] In any event, the Defendants did not address or maintain this issue in their closing  
arguments. In light of my finding of invalidity for lack of distinctiveness, I conclude it is  
unnecessary to make a determination regarding this issue.  
 
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(e)  
Whether Corporate Defendant’s predecessor used the Milano Design Mark prior  
to March 1994  
[121] As I have found above, while the evidence shows that 1252106 Canada Inc., the  
Khorrami brothers’ numbered corporation, is the Corporate Defendant’s predecessor in so far as  
the business operated at the Baxter Location is concerned, 1252106 Canada Inc. is not a  
predecessor in my view of any trademarks or trademark rights that the Defendants allege they  
hold. I therefore conclude it also is unnecessary to make any other determination in connection  
with this issue.  
(f)  
Invalidity because of lack of disclaimer of MILANO  
[122] Again, given the finding of invalidity for lack of distinctiveness, this issue has become  
moot. That said, were I to consider the issue, I would be inclined to the view that the Defendants’  
complaint regarding the lack of a disclaimer in this case is tantamount to an impermissible  
collateral attack against the registrability finding in the 2018 Summary Judgment.  
[123] The Defendants have not articulated clearly, in my view, the statutory basis on which  
they seek to have the Milano Design Registration declared invalid for lack of a disclaimer of  
MILANO or, alternatively, to have the Milano Design Registration amended to incorporate the  
disclaimer. I find that the Defendants’ complaint about the lack of a disclaimer of MILANO  
appears to be rooted in the registrability of the Milano Design Mark, which Justice Mactavish  
found is not in issue. I note that neither party appealed the 2018 Summary Judgment. Further,  
   
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both sides of the dispute were expected to have “put their best foot forward” in their respective  
motions and responses: 2018 Summary Judgment, above at paras 34-35.  
[124] As Justice Gleason (as she then was) observed, “[t]he rule against collateral attack  
prevents parties from questioning an order made by a court of competent jurisdiction in any other  
proceeding except through the appeal process applicable to the order”: Strickland v. Canada  
(Attorney General), 2013 FC 475 at para 43. The Supreme Court defines a “collateral attack” as  
“an attack made in proceedings other than those whose specific object is the reversal, variation,  
or nullification of the order or judgment”: Wilson v The Queen, [1983] 2 SCR 594 at 599.  
[125] For this reason, I find that the Defendants’ reliance on the decision in Emall.Ca Inc  
(Cheaptickets.Ca) v Cheap Tickets and Travel Inc., 2007 FC 243 [Cheap Tickets], in respect of  
this issue, misplaced. The Cheap Tickets decision turned on the question of whether the  
challenged trademarks were descriptive and, hence, whether they were registrable.  
[126] For the above reasons, I would have concluded that the Defendants could not succeed on  
this issue.  
(g)  
Enforceable rights in the registered Milano Design Mark (and/or the Milano  
Word Marks)  
[127] Given my finding of lack of distinctiveness, because of insufficiently controlled  
licensing, I conclude that the issue of whether MPL has enforceable rights in the registered  
Milano Design Mark (and/or the Milano Word Marks) to sustain its claims that the Defendants  
 
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have contravened the TMA sections 19, 20, 22, 7(b) and/or 7(c) must be answered in the negative  
for all of the Plaintiff’s asserted Milano Marks. The TMA s 50(1) applies to both registered and  
unregistered trademarks.  
[128] If my finding were not sustainable, however, I would have considered the Defendants’  
ongoing use of the exact and otherwise validly registered Milano Design Mark, after MPL’s  
termination of permission to use it (or in the absence of such permission), to be a breach of at  
least sections 19 and 20 of the TMA. The evidence demonstrates that the Milano Design Mark  
was not removed from the Defendants’ website until 2018, and is still on a sign at the Baxter  
Location. The Defendants also admitted using substantially the Milano Design Mark on their  
latest menu from 2019.  
[129] In any event, I add that the issue of whether the Milano Design Mark is nonetheless  
distinctive of MPL for the privately-labelled pizza ingredients (i.e. pizza sauce, pepperoni and  
cheese), or, in other words, the goods it sells through Tannis, was not asserted or argued in the  
Plaintiff’s claim or the Defendants’ counterclaim. Further, there was no evidence that anyone  
other than MPL sells such goods. It is not an issue I need to determine and, thus, is not a factor in  
these Reasons.  
[130] In the circumstances, I find it unnecessary to consider issues B, C, D, E and F above,  
leaving issues G and H for consideration, to which I turn next.  
G.  
Actions and communications of MPL and the Personal Defendants by Counterclaim  
 
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(a)  
Have MPL and the Personal Defendants by Counterclaim made false or  
misleading statements tending to discredit the business, goods or services of the  
Defendants, in contravention of the TMA s 7(a)?  
[131] I find that the Defendants have not made out their counterclaim of contravention of the  
TMA s 7(a) by MPL and the Personal Defendants.  
[132] The parties do not disagree about the elements required to succeed in a claim under this  
provision, namely (1) a false and misleading statement, (2) tending to discredit the business,  
wares or services of a competitor, and (3) resulting damage: S. & S. Industries Inc. v Rowell,  
1966 53 (SCC), [1966] SCR 419 at 424.  
[133] The Defendants assert, in their Reply to the Defence to Counterclaim, however, that the  
alleged deceptive and misleading actions by the Defendants by Counterclaim with respect to  
section 7 breaches “stand independently of any determination regarding the ownership of the  
trade-marks at issue.” I disagree.  
[134] As I previously have held, “[t]here is a constitutional limitation on section 7, in that  
standing alone and in association only with (now) section 55, it would not be valid federal  
legislation under subsection 91(2) of the British North America Act; the section derives its  
‘nourishment’ or validity from rounding out the regulatory schemes prescribed by Parliament  
exercising its legislative power in respect of patents, copyrights, trademarks and trade names”:  
Immigration Consultants of Canada Regulatory Council v CICC The College of Immigration and  
 
Page: 49  
Citizenship Consultants Corp., 2020 FC 1191 at para 62, citing MacDonald et al v Vapor  
Canada Ltd, 1976 181 (SCC), [1977] 2 SCR 134 [Vapor] at 172.  
[135] The Supreme Court in Vapor stated further at 172: “The subparagraphs of s. 7, if limited  
in this way, would be sustainable.” The Supreme Court, thus, concluded that paragraph 7(e) was  
not sustainable (and hence, it later was repealed) because there was no subject matter left in  
relation to patents, copyright, trademark and trade names, once paragraphs 7(a) to 7(d) were  
taken into account.  
[136] Regarding the TMA s 7(a) specifically, this Court has held, “[f]or section 7(a) to be valid,  
its application must be limited to creating a cause of action relating to false and misleading  
statements made about a trade-mark or other intellectual property owned by the claimant”:  
Canadian Copyright Licensing Agency v Business Depot Ltd., 2008 FC 737 [Canadian  
Copyright] at para 27. As I explain below in connection with issue H, to the extent the that  
Defendants base this claim on alleged rights in MILANO BAXTER, the Defendants have not  
established that they have used MILANO BAXTER as a trademark within the meaning of  
section 4 of the TMA, or as trade name for that matter.  
[137] The Defendants point to email exchanges in early 2017 between the Plaintiff and two  
suppliers regarding online order fulfillment, Just Eat and Uber, as well as to the testimony of  
Chris Bouziotas of Local Media Concepts Inc., doing business as menu.ca, in support of their  
assertion that the Plaintiff (including the Personal Defendants by Counterclaim) made false or  
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misleading statements tending to discredit the business, goods or services of a competitor,  
contrary to the TMA s 7(a).  
[138] I find the email exchange with Uber to be factual for the most part, while the email  
exchange with Just Eat is inconclusive. In both cases, the representative of the supplier  
apparently sought information about the dispute between MPL and the Baxter Location, to which  
MPL’s counsel responded in the case of Uber and Mazen Kassis responded in the case of Just  
Eat.  
[139] In response to Uber, MPL’s counsel forwarded a copy of the Milano City Pizza judgment  
and a copy of the Statement of Claim filed naming the owner-operators of the Baxter Location as  
Defendants and “alleging infringement of our client’s exclusive rights in the trademarks  
MILANO PIZZERIA, MILANO PIZZA … and MILANO PIZZERIA & Design…” Although in  
my view it was an overreach to assert exclusive rights in MILANO PIZZERIA and MILANO  
PIZZA in this statement, nonetheless the Plaintiff had a valid and subsisting registration at the  
time for the trademark MILANO PIZZERIA & Design (i.e. the Milano Design Registration).  
Accordingly, pursuant to the TMA s 19, the Plaintiff enjoyed exclusive rights in its registered  
trademark until the registration was declared invalid.  
[140] Regarding Just Eat, the representative indicated that after having spoken with both sides,  
they wished not be involved until the dispute was resolved. Although Mazen Kassis asserted in  
his email response that “we are the owners of the trade name Milano Pizza,” this too is not  
inaccurate because the name of the corporation is Milano Pizza Ltd. (The scope of the rights that  
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reside in that name, Milano Pizza, were not addressed until the trial.) Further, Mr. Kassis ended  
his response with: “Of course I will respect your position but only ask that you consult with your  
legal department and see if there is something that can be done.”  
[141] As for Mr. Bouziotas, he testified in cross-examination that he understood that Chadi  
Wansa was a franchisee who owned Baxter’s. As I noted earlier, this is a perception on which  
the Defendants sought to benefit (i.e. that they were part of a larger group or a franchise). That it  
worked to their disadvantage in respect of their relationship with menu.ca is not indicative, in my  
view, of a contravention of the TMA s 7(a). Apart from Mr. Bouziotas testifying that he became  
aware of the dispute and that Mazen Kassis asked him to remove Milano Baxter’s from the  
platform, which they did, I find his testimony overall is insufficient to support the Defendants’  
claim under the TMA s 7(a).  
[142] The Defendants also point to the actions and communications of the Plaintiff in  
connection with the opening of the Baseline Location in 2016, described above. Although I am  
prepared to infer that the Baxter Location is implicated in MPL’s communications via letter and  
menu that mention the unanswered question about why it was opening another location in the  
area, I am not satisfied this equates to a reference to a trademark, as required by Canadian  
Copyright, namely, the alleged trademark MILANO BAXTER. Simply, the Defendants have not  
established that they have used MILANO BAXTER as a trademark.  
[143] I thus conclude that the Defendants’ counterclaim based on the TMA s 7(a) cannot  
succeed.  
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(b)  
Have MPL and the Personal Defendants by Counterclaim directed public attention  
to their goods, services or business in such a way as to cause or be likely to cause  
confusion with those of the Defendants, in contravention of the TMA s 7(b)?  
[144] I am not persuaded that the Defendants can succeed on this ground because, as they have  
framed it, it is inconsistent with their position that the Milano Design Registration is invalid for  
non-distinctiveness. More significantly, until the Milano Design Registration was invalidated by  
this Court, the use of the registered Milano Design Mark was an absolute defence to an action in  
passing off: Remo Imports Ltd. v Jaguar Cars Ltd., 2007 FCA 258 at para 111; 2018 Summary  
Judgment, above at para 133; TFI Foods Ltd. v Every Green International Inc., 2021 FC 241 at  
para 35.  
[145] Leaving aside the latter principle for a moment, according to the Supreme Court, the  
three elements required to establish passing off are goodwill, misrepresentation (resulting in  
deception), and actual or potential damages: Ciba-Geigy Canada Ltd. v Apotex Inc., 1992  
33 (SCC), [1992] 3 SCR 120 [Ciba-Geigy] at 132. The Supreme Court also has held that “the  
[Trademarks] Act creates a scheme regulating both registered and unregistered trade-marks[; …  
i]n its pith and substance, s. 7(b) is directly connected to the enforcement of trade-marks and  
trade-names in Canada: the civil remedy in s. 7(b) protects the goodwill associated with trade-  
marks and is directed to avoiding consumer confusion through use of trade-marks” [emphasis in  
original]: Kirkbi AG v Ritvik Holdings Inc, 2005 SCC 65 [Kirkbi] at para 35.  
[146] The Defendants assert that absent a binding written or verbal agreement with MPL, all  
their use of Milano Pizzeria and the Milano Design Mark must flow to their benefit in their area  
 
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of operation. They point to no case law that would permit the Court to entertain the notion that in  
the face of a finding of non-distinctiveness, the Milano Design Mark nonetheless remains  
distinctive in a slice of the city of Ottawa where, including in neighbouring regions, there are  
more than thirty differently owned and operated MILANO PIZZERIA stores, not to mention  
PIZZERIA MILANO on the other side of the Ottawa River.  
[147] Further, online ordering means there are no restrictions on the area of delivery throughout  
the city, as Mr. Wansa testified, and the evidence demonstrates that the Defendants have  
delivered food, or filled orders from, outside their area. Online ordering also facilitates the  
placing of orders by customers from anywhere in the city who then pick up the ordered food. In  
the circumstances, I am not convinced that the name Milano Pizzeria and the Milano Design  
Mark are distinctive of the Baxter Location in that area only, if at all. Further, according to the  
Defendants, there is no defined area. As noted by Mazen Kassis in his email exchange with the  
Just Eat representative in early 2017, the MPL Licensees “must abide by territorial boundaries,  
while [the Baxter] location … have none.”  
[148] The logical consequence of a lack of controlled licensing for so many years is that the  
names Milano Pizzeria, Milano Pizza and the Milano Design Mark are not distinctive of anyone,  
at least in association with “take out restaurant services, with delivery.” Whether the Milano  
Design Mark is distinctive in association with branded pizza ingredients, and whether the New  
Milano Design as a whole is distinctive of the Defendants, are different questions that remain  
undetermined at this time.  
Page: 54  
[149] In addition, to the extent that the Defendants’ counterclaim includes reliance on asserted  
rights in MILANO BAXTER, it cannot succeed on this basis either, in my view, because of the  
Defendants’ failure to establish the use of that term as a trademark or even as a trade name. At  
the time when the Baxter Location was removed from the website and online ordering system in  
February 2016, the evidence shows that it had been listed among the “Milano Locations” as  
“Baxter – Ottawa West.” At an earlier time when Chadi Wansa controlled the website, the  
Baxter Location was listed as “Ottawa West – Baxter & Iris.” More significantly, there is no  
direct evidence from any of the Baxter Location’s customers that they know the business as, or  
that it is called, Milano Baxter. The fact that the Baseline Location was listed on the website as  
“Milano Baxter – Iris Cobden” after the Baxter Location was removed, is explained by Mazen  
Kassis’ testimony that this is a description of the area served by that location.  
[150] I thus conclude that the Defendants’ have not established first and second elements of the  
passing off test articulated by the Supreme Court in Ciba-Geigy.  
(c)  
Have MPL and the Personal Defendants by Counterclaim passed off their goods  
or services as and for those ordered or requested, in contravention of the TMA s  
7(c)?  
[151] For the same reasons, I am satisfied that the Defendants’ also cannot succeed on their  
second passing off ground. For example, the Defendants argue they have an excellent reputation  
among their longstanding customers. Yet there is no direct evidence supporting this assertion  
from any of the Defendants’ customers, let alone longstanding ones. The Defendants also refer to  
“regular repeat business” from their customers without any supporting evidence. In other words,  
the Defendants cannot point to any direct evidence from customers or others showing that “its  
 
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get-up had acquired a secondary meaning or reputation in the mind of the public such that the  
public identifies that get-up with the [Defendants]”: Searle Canada Inc. v Novopharm Limited,  
1994 3502 (FCA), [1994] 3 FC 603.  
(d)  
Have MPL and the Personal Defendants by Counterclaim made use, in association  
with goods or services, of any description that is false in a material respect and  
likely to mislead the public as to their geographical origin, in contravention of the  
TMA s 7(d)(ii)  
[152] To the extent that the Defendants’ complaint under the TMA s 7(d)(ii) is based on the use  
of “Milano Baxter – Iris Cobden” to identify the Baseline Location on the milanopizza.ca  
website after the Baxter Location was removed, I am not persuaded that this represents a  
description that is false in a material respect and likely to mislead the public as to the  
geographical origin of the applicable goods or services, for several reasons.  
[153] First, the Defendants have not established goodwill or reputation in “Milano Baxter”  
because they have not used the term themselves as a trademark under the TMA s 4 or as a trade  
name.  
[154] Second, the street address of the Baseline Location is indicated immediately under the  
reference to “Milano Baxter – Iris Cobden”. All MILANO PIZZERIA store locations are listed  
in this manner, i.e. with a bolded reference to the location, followed by the street address of the  
applicable store. The first reference to the Baseline Location in the list of MILANO PIZZERIA  
stores appears as “Baseline and Greenbank” with the street address for the location underneath.  
By increasing the resolution of the map in evidence of the Baxter Location’s territory or area of  
 
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operation, I can see that Greenbank and Cobden intersect Baseline, while Baxter and Iris are  
nearby streets.  
[155] I thus accept the Plaintiff’s evidence, in the form of Mazen Kassis’ testimony, that the  
reference to “Milano Baxter – Iris Cobden” describes the area that the Baseline Location serves.  
I do not find that it is false in a material respect.  
H.  
Have the Defendants used the trademark MILANO BAXTER and acquired any reputation  
or goodwill in this mark?  
[156] I find there is insufficient evidence to establish that the Defendants have used MILANO  
BAXTER as a trademark and, therefore, I further find they have acquired neither reputation nor  
goodwill in this asserted trademark.  
[157] General ledger entries in evidence identify the Corporate Defendant as “6034799 Canada  
Inc. (Milano Pizzeria – Baxter).” In my view, the reference to “Baxter” is meant to identify that  
particular MILANO PIZZERIA store to which the general ledger entries pertain. There is no use  
of MILANO BAXTER per se in the entries and, in any event, it would not be use as a trademark  
in association with goods or services, within the meaning of section 4 of the TMA.  
[158] An archived screenshot of the website at http://www.milanopizzeria.ca/ from January 6,  
2010 shows an Ottawa Location listing for “Ottawa West – Baxter & Iris.” Again, this is not use  
of MILANO BAXTER per se, and at best, is a description of a location of a MILANO  
PIZZERIA store (i.e. at or near the streets Baxter and Iris in the west end of Ottawa). It is not,  
 
Page: 57  
however, trademark use in association with goods or services, within the meaning of section 4 of  
the TMA.  
[159] The Defendants complain about the duplicate entry, in the archived website at  
http://order.milanopizzeria.ca/ for August 18, 2018, for the MILANO PIZZERIA store located at  
2529 Baseline Road in Ottawa, one with the heading “Baseline and Greenbank” and the other  
with the heading “Milano Baxter – Iris Cobden.” The Defendants have not established, however,  
that they use MILANO BAXTER as a trademark within the meaning of the TMA s 4 or as a trade  
name. There is no direct evidence showing the Defendants’ use of MILANO BAXTER as a  
trademark or trade name or that it has any reputation as such among customers of the Baxter  
Location or other members of the public who may be familiar with the Defendants’ business.  
VIII. Conclusions  
[160] For the foregoing reasons, the Plaintiff’s action is dismissed. While the Defendants’  
succeed in their counterclaim challenging the validity of the Milano Design Registration for non-  
distinctiveness of the Milano Design Mark under the TMA s 18(1)(b), their counterclaim is  
otherwise dismissed. In the circumstances, I find that the issue of damages is moot.  
[161] I add that, in any event, the Defendants’ claim for enumerated damages for the Plaintiff’s  
removal of the Defendants from the online ordering system discussed earlier in these Reasons is  
not “under a sphere of valid federal jurisdiction vested in the Federal Court”: Salt Canada Inc. v  
Baker, 2020 FCA 127 at para 24 (), [2020] 4 FCR 279. In other words, to the extent that  
the Defendants rely on a breach of covenant (that is, the Plaintiff’s agreement not to remove the  
 
Page: 58  
Defendants from the milanopizzeria.ca website under any circumstances in exchange for the  
assignment of the domain name) as a foundation of their counterclaim, the breach of contract  
allegation is beyond the jurisdiction of this Court to address, in my view.  
IX.  
Costs  
[162] Both sides submitted a Bill of Costs through to the end of trial, including their summary  
judgment motions, the costs of which Justice Mactavish ruled would be payable in the cause.  
Bearing in mind the general costs principles described below, and for the following reasons, I  
determine that the Defendants/Plaintiffs by Counterclaim, as the successful parties, are entitled to  
lump sum costs, including applicable HST and reasonable disbursements, in the amount of  
$104,848.10, payable by the Plaintiff/Defendants by Counterclaim.  
[163] Chief Justice Crampton thoroughly canvassed general costs principles recently in  
Allergan Inc. v Sandoz Canada Inc., 2021 FC 186 [Allergan] at paras 19-36. Briefly, these  
include:  
- Indemnifying the successful party(ies), even if not successful in respect of all positions  
pursued, except in cases of divided success or mixed results (noting that success with  
respect to only some grounds of invalidity does not constitute divided success or mixed  
results);  
- Sanctioning behaviour that increases the duration and expense of the proceeding, or is  
unreasonable or vexatious;  
- Broad discretion of the Court over the amount and allocation of costs, per the Federal  
Courts Rules, SOR/98-106 [FCR], Rule 400(1);  
 
Page: 59  
- Fixing costs with reference to Tariff B (the default level being the mid-point of Column  
III) or in a lump sum amount, per the FCR Rules 400(4) and 407;  
- Determining a lump sum amount by beginning at the mid-point of 25%-50% range for a  
complex drug patent proceeding, or at the lower end of this range for other cases and  
assessing the Rule 400(3) factors to determine if a higher amount is warranted (per  
Seedlings Life Science Ventures, LLC v Pfizer Canada ULC, 2020 FC 505 at para 22);  
and  
- Assessing disbursements in full, provided they are reasonable.  
[164] The Defendants have not convinced me that solicitor-client costs are warranted in the  
circumstances, nor that the Plaintiff’s/Defendants’ by Counterclaim conduct was “so malicious,  
oppressive and high-handed that it offends the court’s sense of decency,” thus warranting an  
award of punitive damages: Bauer Hockey Corp. v Sport Maska Inc. (Reebok-CCM Hockey),  
2014 FCA 158 at para 19.  
[165] The fact that the Court took the Plaintiff to task for a course of conduct in a related but  
separate proceeding (that is, in connection with the Milano City Pizza matter discussed above), is  
not a factor, in my view, that justifies a finding of “reprehensible, scandalous or outrageous  
behaviour,” and hence costs sanctions, in the instant action. Until the Court found the Milano  
Design Registration invalid for insufficient controlled licensing, the Plaintiff otherwise was  
entitled to pursue lawful enforcement measures.  
[166] Further, I am not persuaded that the Plaintiff’s conduct of its case unduly lengthened or  
made the proceedings more complex than necessary in the circumstances. As the Defendants’  
Page: 60  
noted, they raised in their counterclaim multiple grounds of invalidity of the Milano Design  
Registration, in addition to multiple section 7 claims that both parties raised. That said, I find that  
this matter was a moderately complex trademark action with multiple inter-related claims raised  
by both sides.  
[167] I have considered the Defendants’/Plaintiffs’ by Counterclaim Bill of Costs. It proposes  
three possible awards: one based on a mix of mid Column III and top of Column V of Tariff B,  
another based on 50% of actual costs and the third based on 100% of actual costs. I have noted  
discrepancies in the total amounts for the actual costs columns, none of which appears to change  
the totals, however, by more than $1,000.  
[168] I observe that a bill of costs generally should not present an accounting exercise for the  
Court. Further, where a bill of costs is broken down into components, such as “pleadings and  
documentary discovery,” “examinations for discovery,” and “pre-trial procedures,” among  
others, sub-total amounts should be provided to assist the Court.  
[169] Having regard to the above discussion on costs, I am satisfied that a lump sum costs  
award of $104,848.10, payable by the Plaintiff/Defendants by Counterclaim, is justified in the  
circumstances. This amount represents 30% ($89,794.35, being reasonable fees) of the  
Defendants’ estimated 100% actual costs for the entire proceeding including the summary  
judgment motion, plus HST ($89,794.35 x .13 = $11,673.27 (rounded)) and reasonable  
disbursements ($3,380.48).  
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JUDGMENT in T-152-17  
THIS COURT ADJUDGES, DECLARES AND ORDERS that:  
1. The Plaintiff’s action, as amended on January 8, 2021, is dismissed.  
2. Registration number TMA571,144 for trademark MILANO PIZZERIA & Design  
dated November 22, 2002 for “take out restaurant services, with delivery” is invalid  
and is to be expunged from the register of trademarks, pursuant to paragraph 18(1)(b)  
of the Trademarks Act, RSC 1985, c T-13.  
3. In all other respects, the counterclaim of the Defendants/Plaintiffs by Counterclaim,  
as amended on January 5, 2021, is dismissed.  
4. Lump sum costs in the amount of $104,848.10 shall be payable by the  
Plaintiff/Defendants by Counterclaim to the Defendants/Plaintiffs by Counterclaim.  
5. There is no separate award of damages; the issue is moot.  
"Janet M. Fuhrer"  
Judge  
Page: 62  
Annex “A” : Summary of the Parties’ Live Evidence at Trial  
Witnesses of the Plaintiff/Defendants by Counterclaim  
Mazen Kassis  
Mazen Kassis testified twice at trial, first on behalf of the Plaintiff, and then later on behalf of the  
Defendants by Counterclaim. Mr. Kassis confirmed that he has been the president of Milano  
Pizza Ltd. [MPL] since 2013. He testified that MPL is an Ottawa-based licensing company that  
has been in the area for 40 years, and presently has 38 licensees at the time of the trial.  
Mr. Kassis testified that his family started in the pizza business in 1973, and that he and all of his  
siblings later went on to own their own individual pizza businesses. Mr. Kassis stated that his  
brother, Marwan, owned the first Milano Pizzeria, and that he, Mazen, became involved with  
Milano Pizza in 1998 by selling off his pizzeria and purchasing shares in MPL. They looked to  
expand the business to new locations, each named “Milano Pizzeria.” He further testified that  
these locations were not owned by MPL, but rather by individual operators who agreed to certain  
conditions in exchange for permission to use the Milano name and mark, including purchasing  
supplies and territorial agreements.  
The Milano Design Mark has been the same, in general appearance, for as long as he can recall.  
He stated that most of these licensees have come from their group of operators; that is, they are  
former employees. Training of the licensees was never formally mandated.  
He stated further that licensing agreements are not always in writing but were agreed to verbally  
and comply with the rules (i.e. purchasing from distributors/suppliers, including branded  
products such as pizza sauce, complying with the menu, to an extent, and with the territory). Mr.  
Kassis explained that copies of licensing agreements, that were retained by Marwan Kassis, his  
now late brother and founder of Milano Pizza at that time, were lost in a flood in 2004 or 2005.  
Mr. Kassis also explained that licensees must purchase certain items under the Milano brand,  
including pizza boxes, cheese, pepperoni and pizza sauce, which is essential to their mark. The  
sauce is a designated sauce for Milano Pizza and all licensees have been required to use the  
specified Milano sauce for more than 20 years.  
Mr. Kassis acknowledged that some of the licensing agreements were signed in 2017, after  
litigation against Mr. Wansa began. He testified later to his understanding that MPL would have  
approved the sale of the Baxter Location to the licensees with conditions and that there was a  
licence agreement with the purchasers but he did not meet with them to have the agreement  
signed. He added that they paid royalties until April or May 2006. The Montreal Road Location  
also paid royalties.  
Mr. Kassis also testified regarding MPL’s licensing arrangements. He stated that it’s a fluid  
business and that licensees come to Milano because they have relaxed licence agreements with  
few requirements. Sometimes the licensees don’t comply with the licence agreement but there is  
an understanding, an explanation for it. He confirmed that there are no uniforms. Additions to  
menus are tolerated (such as Kemptville Pizza or Manotick Special); there is no impact on the  
 
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total look of menu or the larger mark of the company. There is loose quality control through the  
supplier or distributor representative, customers, and licensees. Mr. Kassis admitted that the  
service of a territory is out of their hands once it has been assigned and further, that the territory  
could be under- or poorly-served if the licensee does not open a second location where  
encouraged. He stated that while MPL encourages higher pricing, it is not compelled nor  
uniform. Further, MPL does not do audits of sales; they just go by experience.  
Christos Bouziotas  
Christos Bouziotas confirmed that he works for menu.ca (Local Media Concepts Inc.); they  
provide restaurants with the software and mechanism to be able to accept online orders. He  
testified that the company first started working for Chadi Wansa by setting up an online ordering  
platform and installing hardware in his store so that he could receive online orders.  
After Mr. Bouziotas was introduced to Mazen Kassis, they started working with him. According  
to Mr. Bouziotas, it was clear right from the beginning that Mazen was “the man,” or that he was  
the franchisor, as far as Mr. Bouziotas knew, that he was responsible for all the Milanos and that  
it was his website (i.e. milanopizzeria.ca). Mr. Bouziotas explained that everyone, including  
Chadi, introduced Mr. Kassis as the franchisor. He stated that after he started working with  
Kassis, the contact with Mr. Wansa was minimal.  
Mr. Bouziotas testified that, to his knowledge, the milanopizzeria.ca domain was never  
transferred to Mr. Kassis by Mr. Wansa and references emails supporting this statement. Mr.  
Bouziotas stated he found it odd that Mr. Wansa did not transfer the domain because he had  
promised to do so, and that he got the sense there was a dispute between the parties. Mr.  
Bouziotas later testified, however, that Milano Pizza eventually acquired the domain through a  
domain service.  
Rabah Abou Hassan  
Rabah Abou Hassan confirmed that he has owned the Milano Pizzeria at 1078 Merivale in  
Ottawa [Merivale Location] since 2012 and managed the store for 4 years before purchasing it.  
He stated that he has always used the name Milano Pizzeria, and that the location has been there  
for 40 or 42 years. It is the main Milano Pizzeria location.  
Mr. Hassan testified that he has a franchise with his own territory and nobody (other Milano  
Pizzeria operators) is allowed to go into it. He stated that he has permission to use the trademark  
and name Milano Pizzeria, and that the conditions on this permission include purchasing supplies  
through Tannis and Pepsi. Mr. Hassan confirmed that other than purchasing supplies, he has  
control over running the Merivale Location, including the food he prepares, and the recipes he  
uses and delivery drivers. He also provided that he has control over advertising, but has joined in  
on joint initiatives with Mr. Kassis and other locations.  
Mohammed Toufaely  
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Mohammed Toufaely confirmed that he owns a Milano Pizzeria in Richmond, Ontario  
[Richmond Location]. He bought the store in 1996, then under a different name and changed to  
Milano’s in 1998. He understands that he has permission to use the Milano Pizzeria name and  
logo as long as he purchases supplies from Tannis. He confirmed that he did not have a written  
licence agreement in 1998 but that he signed an agreement with MPL “a couple years ago”  
which outlined similar conditions. He testified that he has never had any issues with MPL.  
Mr. Toufaely further testified that he did not talk to a lawyer before signing the (September  
2013) licence agreement with MPL, and that he considered the clause that MPL owns the  
trademark an important term of the agreement. He added that he and Mazen Kassis defined the  
territory for his location. He also testified that he controls the territory (his consent is required for  
another licence to be awarded in his territory), the recipes he uses, and that he prepares certain  
recipes and controls delivery, training/hiring, and customer service.  
Abed el Hadi Zawawi  
Abed el Hadi Zawawi confirmed that he is the owner of a Milano Pizzeria in Orleans, at 3848  
Innes Road [Orleans Location]. He owns the store which he has operated for 12 years. He stated  
that the business is a franchise owned by the Kassis family, and that the franchise owns the name  
“Milano,” which he has permission to use as long as he purchases supplies from Tannis and  
Pepsi. He considers that his business operates under the “Milano’s franchise” and that his  
business does not the name. Mr. Zawawi stated that he did not sign a licence agreement right  
away, only after he had started operating. Nothing changed after he signed the agreement.  
Mr. Zawawi testified that he did not have a lawyer review the September 2013 agreement, and  
that he understands that MPL owns the Milano trademark. Mr. Zawawi further testified that his  
location has its own territory, and that this was allocated by Mazen Kassis. They agreed on the  
territory when Mr. Zawawi’s store, the second location in the area, was opened because the first  
location had been there for almost 30 years. He stated that he is in control over the delivery  
services, customer service, staff training, and some aspects of marketing and advertising (flyers)  
in his territory.  
Witnesses of the Defendants/Plaintiffs by Counterclaim  
Chadi Wansa  
Chadi Wansa, along with his partners, his cousin, Youssef Zaher and his uncle, Youssef Nassar,  
own and operate a Milano Pizzeria on Baxter Road, Ottawa [Baxter Location], through the  
Corporate Defendant, 60434799 Canada Inc.. They acquired the business, including assets and  
goodwill, from Vahid Khorrami who, with his brother Farid Khorrami, owned the business at  
this location through 1252106 Canada Inc. According to Mr. Wansa, no trademark clearance  
search was conducted when they purchased the business. Although Mr. Wansa testified that he  
did not approach with Marwan Kassis about acquiring a Milano location, he did recall speaking  
with Vahid Khorrami. Mr. Wansa also recalled that Mazen Kassis did explain the purchasing  
arrangement to him: “He’s like, you know, I negotiate on your behalf, I get the best deal and then  
I take my cut from it, you know.”  
Page: 65  
Mr. Wansa testified that all three partners were involved in different aspects of running the  
business. He testified that they decided on ingredients, menus, décor, advertising, how they  
addressed, how to hire, training for employees, and delivery, with no restrictions. Mr. Wansa  
further testified that the Milano locations cooperate for marketing efforts, and that they formed a  
somewhat loosely organized cooperative for the purpose of funding marketing campaigns from  
joint purchasing from suppliers.  
Mr. Wansa provided an overview of the dispute between the Baxter Location and Mazen Kassis,  
including issues surrounding the website listing and online ordering. He explained that he  
acquired the domain milanopizzeria.ca in 2003 and paid a web designer $4,000 to create and set  
up the website. Mr. Wansa testified that he had full control over the website and initially they  
were the only location advertising on it. About nine locations later were added.  
When Just Eat came along in 2010 with an online ordering platform, Mr. Wansa jumped on it.  
He testified that there was no input from MPL. Mr. Wansa explained that when Skip the Dishes  
came along in 2012, the three partners decided to jump on that too, and then later on Uber Eats.  
Online ordering became a crucial part of their business, representing about 25 per cent. He  
highlighted that with online ordering, there is no restriction on the delivery area.  
Prior to the dispute, Mr. Wansa had a friendly relationship with Mr. Kassis. From 2002-2013,  
there was no mention of trademarks. Mr. Wansa testified that after Mazen Kassis became the  
president of MPL in 2013, they discussed transferring the milanopizzeria.ca domain to Mr.  
Kassis. He stated that he had some reservations about this, but decided to move forward with the  
plan once Mr. Kassis agreed not to remove the Baxter Location from the website for any reason  
without consent. Mr. Wansa testified that he remained as an administrator on the domain  
account, at the request of Mr. Kassis, until he eventually was removed.  
The Baxter Location was removed from the website and online ordering system first on  
November 15, 2015 over refusal to order a certain size of Pepsi and then again, permanently, in  
February 2016 over refusal to order pizza boxes. Mr. Wansa stated that shortly after the Baxter  
Location was removed from the website, Mr. Kassis began marketing a new Milano location off  
Baseline Road [Baseline Location], in close proximity to the Baxter Location. Mr. Wansa  
testified that, as a result, online sales declined after the Baxter Location was removed from the  
website, and customers expressed confusion with the new location opening – with some  
believing that the Baxter Location had closed or was closing. He added that he came across  
sponsored posts on Facebook advertising this location.  
Mr. Wansa testified that he is familiar with a Milano Pizzeria located in the Masson-Angers  
sector of Gatineau, QC. He stated that he has visited the location twice and noted that they are  
operating with a different logo than the Milano Pizza Ltd. logo.  
On cross-examination, Mr. Wansa testified that Vahid Khorrami explained that the Milano  
locations cooperate for marketing efforts, and that they formed a somewhat loosely organized  
cooperative. He stated that, from his point of view, this structure had always been in place. He  
stated that a Milano location joins the cooperative by agreeing to participate in a marketing  
campaign. Mr. Wansa testified that Mr. Khorrami told him that purchasing supplies from Tannis  
allows MPL to collect a kickback that goes toward marketing campaigns for the locations. Mr.  
Page: 66  
Wansa stated that he paid a monthly fee of $500 to MPL, identified in his accounting ledger as  
royalty payments, for marketing purposes  
Mr. Wansa stated that he did not consider himself a licensee and they did not have a contract for  
their location. He recognized Marwan Kassis’ signature on a map of the territory for the Baxter  
Location. He testified that he was free to set the pricing at his location. He stated that other  
locations controlled their pricing though their menus, also posted in milanopizzeria.ca.  
Mr. Wansa stated that he believed that the perception that Milano was a franchise was beneficial.  
Youssef Nassar  
Youssef Nassar testified that he was approached by his niece’s husband, Mahmoud Tabaja about  
purchasing a Milano Pizzeria location in Russell, Ontario. He purchased the assets of the  
business in early 2000s which he operated as a sole proprietor.  
In 2002, Mr. Nassar, along with his business partners Chadi Wansa and Youssef Zaher,  
purchased the Baxter Location from the previous owners, Vahid and Farid Khorrami. Mr. Nassar  
stated that MPL was involved with the lease of the building but not with the actual purchase of  
the business itself. Further, there were no licence agreements nor any reference to trademarks  
when they purchased the business. Mr. Nassar testified, however, that the Baxter Location was  
making monthly payments to MPL for marketing.  
Mr. Nassar testified that he was the manager of the Baxter Location. He stated that from 2002 to  
2012, MPL was not involved in the operation of the business. He stated that they had complete  
control over the food they prepared and had distinct menu items. He testified that they generally  
had no oversight from Milano Pizza Ltd, from décor, operational hours, and delivery details; it  
was all at the discretion of himself, Wansa and Zaher. Mr. Nassar testified that Tannis was the  
main supplier of goods, and the Baxter Location began using it in 2005 until 2016.  
Mr. Nassar provided testimony with respect to the dispute between the Baxter Location and MPL  
over compliance regarding purchasing from Milano suppliers Pepsi and Tannis. Mr. Nassar  
testified about the soft drink dispute and the details surrounding the website listing and their  
location’s removal. He noted the disruption to the revenue. He also added that they had declined  
to be involved in some of the initiatives Kassis was supporting, specifically a two-for-one deal.  
Mr. Nassar described the dispute that arose from the pizza boxes the Baxter Location chose to  
use from another supplier. He stated that they felt that they were at the mercy of Mr. Kassis,  
regarding their online ordering presence, and explained the impact of the newly opened Baseline  
Location in close proximity to their own, including customer confusion for pick-up orders. Mr.  
Nassar stated that they switched from the Milano boxes to the boxes of their choosing after the  
time they were taken offline in 2016 because they did not want to promote ordering online.  
Vahid Khorrami  
Vahid Khorrami is the previous owner and operator of the Baxter Location. He testified that he  
became involved with a Milano Pizzeria in 1987 when he worked part-time at the Bank and Hunt  
Page: 67  
Club location. Marwan Kassis and Frank Ianni were the owners. He changed locations in 1992 to  
the Baxter Location, owned by Joe Kassis at that time who sold it to Kamal Ibrahim.  
Mr. Khorrami explained that he purchased 50% of the business from Kamal Ibrahim in 1995 and  
later brought in his brother, Farid with whom he ran the business, after purchasing the remaining  
50 per cent. They set up a company together, 1252106 Canada Inc. During the time when Mr.  
Khorrami owned 50% of the business with Kamal Ibrahim, he learned Mr. Ibrahim was paying a  
monthly fee for the use of the Milano name. They continued paying the monthly fee for a little  
while, after they bought the remaining 50% of the business from Kamal Ibrahim, to use the  
Milano name.  
Mr. Khorrami stated that he and his brother had complete control of the business, including  
menus, specials, and marketing. He stated that he was not aware that MPL existed when he  
purchased the business.  
Mr. Khorrami testified that he made the sauce in-house and that there was no involvement from  
MPL. He stated that while they used the camera-ready logo from the designer, all of the menus  
were different - every location had its own menu with different combinations of pizza and  
different menu items.  
Mr. Khorrami testified that Marwan Kassis approached him about a meeting of Milano owners  
where they first discussed a group discount for purchases from Tannis and putting rebate money  
toward a combined marketing effort. He stated that they also discussed a uniform (for which  
arrangements were made only once) and a logo at a later meeting, where it was decided to adopt  
uniform signage (in the sense of consistent) at all locations. Mr. Khorrami stated that Mr. Kassis  
contacted a designer and together the group selected the final design. He testified that there was  
no written agreement, nor any discussion about who would own the logo. It made good business  
sense, however, in the eyes of the customers to have a common look and give the impression of a  
bigger company with six or seven stores.  
Mr. Khorrami stated that at another meeting, Mr. Kassis informed him and other location owners  
that he owned the Milano name and would be keeping the rebate. Mr. Khorrami testified that it  
didn’t have much of an impact on his business; so he continued to operate and make purchases  
from Tannis and making business decisions for his location. He stated that he had no assistance  
from Milano Pizza with the trial-and-error phase of his business.  
Mr. Khorrami testified that he was approached by Chadi Wansa in 2002 about purchasing the  
business. He added that Mr. Wansa came to work for him to learn about the business. He stated  
that he was hesitant to sell the business, but changed his mind after learning from his lawyer that  
there was no Milano structure, no solid company, and no solid foundation for going forward. He  
agreed to sell the business to 6034799 Canada Inc.. He stated that by that time, he had  
established a lot of goodwill with the business.  
Mr. Khorrami further testified that MPL was not involved in the sale. He advised Mr. Wansa,  
however, to speak with Marwan Kassis and Mahmoud Tabaja. Mr. Khorrami recalled that Mr.  
Wansa reported back that “they said they’re okay” and that they thought Mr. Wansa was paying  
Page: 68  
too much for the store. He also testified that he explained the “ground rules” about buying from  
Tannis and respecting your territory.  
Mr. Khorrami stated that he approached Nick Mourad about purchasing his Milano Pizzeria on  
Montreal Road [Montreal Road Location] and he stated that there was again no involvement by  
MPL. He testified that MPL only became involved after he had made major changes to the  
business. At that time, he was encouraged to buy the Tannis pizza sauce. Mr. Khorrami stated  
that he would try to buy most of the ingredients from Tannis, as he did at the Baxter Location,  
“to respect that agreement verbally we had in the beginning.” He still relied on other suppliers,  
however, for “top quality” for his business. He testified that he later sold the business to the  
daughter of Chadi Wansa’s father-in-law, Rania Yehia. He stated again that MPL was not  
involved in the sale.  
Mr. Khorrami testified that at one point there was discussion of using a main phone number for  
all of the operators, but that he decided not to proceed and preferred to maintain his own number.  
Mr. Khorrami testified that he was not privy to the sale documents between Joe Kassis and  
Kamal Ibrahim. He testified that when he became a part owner, he was made aware of a monthly  
fee paid to Milano for use of the Milano name, which he continued to pay until the Tannis rebate  
program was introduced which then covered the monthly fee. Mr. Khorrami testified that he  
wrote the monthly fee cheque to Marwan Kassis directly.  
Mr. Khorrami testified (in cross-examination) that while there were territories for the locations,  
they were not on paper but rather “it was just imaginative lines.”  
Rania Yehia  
Rania Yehia is a former owner of the Montreal Road Location. She testified that MPL was not  
involved when she purchased the business from Vahid and Farid Khorrami, and that she did not  
have contact with anyone other than the Khorrami brothers. (Mazen Kassis testified, however,  
that he dealt several times with Rania Yehia’s father, Hussein Yehia, who also was Chadi  
Wansa’s father-in-law, including with respect to royalty payments and the issue of permitting  
Halal steak on the menu. Vahid Khorrami also testified that when he sold the Montreal Road  
Location, while the business was put into Rania Yehia’s name, it was Chadi Wansa’s father-in-  
law, i.e. Ms. Yehia’s father, who was interacting with Mr. Khorrami.)  
Ms. Yehia testified that she made her own sauce and that she purchased supplies – cheese,  
tomato paste to make her sauce, spices, flour, yeast - sometimes from Tannis, but also National  
Grocer and Costco. Controlling food costs was important. She also did the hiring, firing, training,  
inventory – any aspect of the business, including advertising and specials. There was never any  
involvement by MPL – no agreements, no guidance. They did visit the store once, for about 10-  
15 minutes, commented that the pizza sauce needed more sugar, and left.  
Ms. Yehia stated that she sold the business and all of the assets in 2010 to Mr. Naji Zizi, and  
again MPL was not involved with the sale in any capacity. Ms. Yehia stated that neither she nor  
her father had any contact with Marwan or Mazen Kassis.  
Page: 69  
Nicolas Aboud-Mourad  
Nicolas Aboud-Mourad confirmed that he is the former owner of the Montreal Road Location,  
which he purchased from Marwan Kassis. He testified that he later sold the location to the  
Khorrami brothers around 2002/2003. Mr. Aboud-Mourad testified that he did not have any  
contact with Milano Pizza Ltd., until the meeting regarding joint purchasing with Mazen Kassis  
and other location operators. He stated that they also discussed the Milano logo, but that there  
was never any discussion about who owned the logo or a formal agreement.  
Dimitrios Stougianos  
Dimitrios Stougianos testified that he currently operates a restaurant at 745 chemin de Masson,  
and has been operating it for the last 40 years. He has been using the same menu for this length  
of time. It depicts the words “Pizzeria Milano Restaurant,” with the words Pizzeria and  
Restaurant in green letters and the larger word Milano in red letters. He testified that he sells  
more pizzas than other items, and offers delivery to the Masson area.  
Mr. Stougianos also was shown a photograph of the façade of his restaurant showing, in the front  
window, a yellow sign with a red border, and the words PIZZERIA MILANO also in red letters,  
with a phone number in black numbers underneath the larger of the two words, MILANO. He  
testified that the sign for his restaurant is visible from the road and is the main sign for his  
business, although it sometimes is covered when the blinds are lowered, such as when there is  
sun or at night. There used to be a sign on the pole outside the restaurant but it fell down in the  
past year. He stated that his business is well known in the area as Milano Pizzeria.  
Mr. Stougianos confirmed that his receipts have always said “Pizzeria Nouveau Milano,” and  
that his business does not have a website. He stated that he recognized the online listings with a  
red location pin as his business, “Pizzeria Nouveau Milano.” He stated that the name of his  
business is, and has always been, “Pizzeria Nouveau Milano,” and that he refers to it as such.  
Jean Lemieux  
Jean Lemieux testified that he has been an accountant for 45 years, and confirmed that Dimitrios  
Stougianos is one of his clients. He stated that he has known him since 2010, and that Mr.  
Stougianos owns and operates a pizzeria in the Masson sector of Gatineau, QC.  
Mr. Lemieux stated that he came to know Mr. Stougianos while he was living in Masson from  
1994 to 2017. He testified that he ordered food from the restaurant that was delivered. The  
business is known for pizza. He testified that, as far as he knows, the business always has  
operated at the same location.  
Mr. Lemieux testified that he referred to Mr. Stougianos’s business as Pizza Milano, and that the  
sign for his business is visible from the street. He stated that the business was well known when  
he lived in Masson.  
Page: 70  
Mr. Lemieux confirmed that the business operates under the name Pizzeria Nouveau Milano. He  
stated that when he lived in Masson he did not have pizza or other take out food delivered to him  
from Ottawa.  
Yousef Jaber  
Yousef Jaber testified that he has been a CPA for 20-25 years and provides bookkeeping and  
income tax preparation services. He stated that Chadi Wansa and his partners and the Milano  
Pizzeria business on Baxter Road are his clients and have been for the last 15 years. He testified  
that his firm also represents other Milano Pizzeria operators and MPL.  
Mr. Jaber recalled that Mr. Wansa asked for accounting records for the business and Mr. Jaber  
responded that he had records going back six years as required by CRA rules. He testified that  
when he checked the record, he could access to 2004. Mr. Jaber stated that he provided the  
Milano Baxter general ledger to Mr. Wansa.  
Mr. Jaber explained that although the heading “royalties” appears on the leger, it was not  
confirmed with anyone; one of his bookkeepers assumed the payments were royalties because  
they were made to MPL. He stated that he did not receive instructions from Chadi Wansa or  
anyone else to call these payments royalties. Mr. Jaber testified that because they have many  
Milano Pizza clients, they operated under the impression that they are a franchise. It was not  
based on fact or document or anything else. He confirmed that the classification was done for tax  
purposes. He stated that in recent years, there were no payments.  
On re-examination, Mr. Jaber testified that he does not recall meeting with Marwan Kassis and  
giving him the document with all of the royalty payments. He stated that he was not aware of any  
ongoing legal proceedings when he provided this document.  
Page: 71  
Annex “B” : Relevant Provisions  
Trade-marks Act, RSC 1985, c T-13  
Loi sur les marques de commerce, LRC 1985, ch T-13  
Version of document from 2018-12-30 to 2019-06-16  
Version du document du 2018-12-30 au 2019-06-16  
Interpretation  
Définitions et interprétation  
When deemed to be used  
Quand une marque de commerce est  
réputée employée  
4 (1) 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  
4 (1) Une marque de commerce est réputée  
employée en liaison avec des produits si, lors  
du transfert de la propriété ou de la possession  
de ces produits, dans la pratique normale du  
commerce, elle est apposée sur les produits  
packages in which they are distributed or it is in mêmes ou sur les emballages dans lesquels ces  
any other manner so associated with the goods produits sont distribués, ou si elle est, de toute  
that notice of the association is then given to the autre manière, liée aux produits à tel point  
person to whom the property or possession is  
transferred.  
qu’avis de liaison est alors donné à la personne  
à qui la propriété ou possession est transférée.  
Idem  
Idem  
(2) A trade-mark is deemed to be used in  
association with services if it is used or  
displayed in the performance or advertising of  
those services.  
(2) Une marque de commerce est réputée  
employée en liaison avec des services si elle  
est employée ou montrée dans l’exécution ou  
l’annonce de ces services.  
Unfair Competition and Prohibited Signs  
Concurrence déloyale et signes interdits  
Prohibitions  
Interdictions  
7 No person shall  
7 Nul ne peut :  
(a) make a false or misleading statement  
tending to discredit the business, goods or  
services of a competitor;  
a) faire une déclaration fausse ou trompeuse  
tendant à discréditer l’entreprise, les  
produits ou les services d’un concurrent;  
(b) direct public attention to his goods,  
services or business in such a way as to cause  
or be likely to cause confusion in Canada, at  
the time he commenced so to direct attention  
to them, between his goods, services or  
business and the goods, services or business  
of another;  
b) appeler l’attention du public sur ses  
produits, ses services ou son entreprise de  
manière à causer ou à vraisemblablement  
causer de la confusion au Canada, lorsqu’il  
a commencé à y appeler ainsi l’attention,  
entre ses produits, ses services ou son  
entreprise et ceux d’un autre;  
 
Page: 72  
(c) pass off other goods or services as and for  
those ordered or requested;  
c) faire passer d’autres produits ou services  
pour ceux qui sont commandés ou  
demandés;  
(d) make use, in association with goods or  
services, of any description that is false in a  
material respect and likely to mislead the  
public as to  
d) employer, en liaison avec des produits ou  
services, une désignation qui est fausse sous  
un rapport essentiel et de nature à tromper le  
public en ce qui regarde :  
…
…
(ii) the geographical origin, or  
…
(ii) soit leur origine géographique  
…
of the goods or services.  
BLANK  
Validity and Effect of Registration  
Validité et effet de l’enregistrement  
Effect of registration in relation to previous  
use, etc.  
Effet de l’enregistrement relativement à  
l’emploi antérieur, etc.  
17 (1) No application for registration of a trade- 17 (1) Aucune demande d’enregistrement  
mark that has been advertised in accordance  
with section 37 shall be refused and no  
registration of a trade-mark shall be expunged  
d’une marque de commerce qui a été annoncée  
selon l’article 37 ne peut être refusée, et aucun  
enregistrement d’une marque de commerce ne  
or amended or held invalid on the ground of any peut être radié, modifié ou tenu pour invalide,  
previous use or making known of a confusing du fait qu’une personne autre que l’auteur de la  
trade-mark or trade-name by a person other than demande d’enregistrement ou son prédécesseur  
the applicant for that registration or his en titre a antérieurement employé ou révélé  
predecessor in title, except at the instance of that une marque de commerce ou un nom  
other person or his successor in title, and the commercial créant de la confusion, sauf à la  
burden lies on that other person or his successor demande de cette autre personne ou de son  
to establish that he had not abandoned the  
confusing trade-mark or trade-name at the date  
of advertisement of the applicant’s application.  
successeur en titre, et il incombe à cette autre  
personne ou à son successeur d’établir qu’il  
n’avait pas abandonné cette marque de  
commerce ou ce nom commercial créant de la  
confusion, à la date de l’annonce de la  
demande du requérant.  
When registration incontestable  
Quand l’enregistrement est incontestable  
(2) In proceedings commenced after the  
expiration of five years from the date of  
registration of a trade-mark or from July 1,  
1954, whichever is the later, no registration  
shall be expunged or amended or held invalid  
on the ground of the previous use or making  
known referred to in subsection (1), unless it is  
established that the person who adopted the  
registered trade-mark in Canada did so with  
(2) Dans des procédures ouvertes après  
l’expiration de cinq ans à compter de la date  
d’enregistrement d’une marque de commerce  
ou à compter du 1 er juillet 1954, en prenant la  
date qui est postérieure à l’autre, aucun  
enregistrement ne peut être radié, modifié ou  
jugé invalide du fait de l’emploi ou révélation  
antérieure mentionnée au paragraphe (1), à  
moins qu’il ne soit établi que la personne qui a  
adopté au Canada la marque de commerce  
Page: 73  
knowledge of that previous use or making  
known.  
déposée l’a fait alors qu’elle était au courant de  
cet emploi ou révélation antérieure.  
When registration invalid  
Quand l’enregistrement est invalide  
18 (1) The registration of a trade-mark is invalid 18 (1) L’enregistrement d’une marque de  
if  
commerce est invalide dans les cas suivants :  
(a) the trade-mark was not registrable at the  
a) la marque de commerce n’était pas  
date of registration;  
enregistrable à la date de l’enregistrement;  
(b) the trade-mark is not distinctive at the  
time proceedings bringing the validity of the  
registration into question are commenced;  
b) la marque de commerce n’est pas  
distinctive à l’époque où sont entamées les  
procédures contestant la validité de  
l’enregistrement;  
(c) the trade-mark has been abandoned;  
c) la marque de commerce a été  
abandonnée;  
(d) subject to section 17, the applicant for  
registration was not the person entitled to  
secure the registration;  
d) sous réserve de l’article 17, l’auteur de la  
demande n’était pas la personne ayant droit  
d’obtenir l’enregistrement;  
…
…
Rights conferred by registration  
Droits conférés par l’enregistrement  
19 Subject to sections 21, 32 and 67, the  
registration of a trade-mark in respect of any  
goods or services, unless shown to be invalid,  
gives to the owner of the trade-mark the  
exclusive right to the use throughout Canada of  
the trade-mark in respect of those goods or  
services.  
19 Sous réserve des articles 21, 32 et 67,  
l’enregistrement d’une marque de commerce à  
l’égard de produits ou services, sauf si son  
invalidité est démontrée, donne au propriétaire  
le droit exclusif à l’emploi de celle-ci, dans  
tout le Canada, en ce qui concerne ces produits  
ou services.  
Infringement  
Violation  
20 (1) The right of the owner of a registered  
20 (1) Le droit du propriétaire d’une marque de  
trade-mark to its exclusive use is deemed to be  
commerce déposée à l’emploi exclusif de cette  
infringed by any person who is not entitled to its dernière est réputé être violé par une personne  
use under this Act and who  
qui est non admise à l’employer selon la  
présente loi et quiꢀ:  
(a) sells, distributes or advertises any goods  
or services in association with a confusing  
trade-mark or trade-name;  
a) soit vend, distribue ou annonce des  
produits ou services en liaison avec une  
marque de commerce ou un nom  
commercial créant de la confusion;  
(b) manufactures, causes to be manufactured,  
possesses, imports, exports or attempts to  
export any goods in association with a  
b) soit fabrique, fait fabriquer, a en sa  
possession, importe, exporte ou tente  
d’exporter des produits, en vue de leur vente  
ou de leur distribution et en liaison avec une  
Page: 74  
confusing trade-mark or trade-name, for the  
purpose of their sale or distribution;  
marque de commerce ou un nom  
commercial créant de la confusion;  
(c) sells, offers for sale or distributes any  
label or packaging, in any form, bearing a  
trademark or trade-name, if  
c) soit vend, offre en vente ou distribue des  
étiquettes ou des emballages, quelle qu’en  
soit la forme, portant une marque de  
commerce ou un nom commercial alors  
queꢀ:  
(i) the person knows or ought to know that  
the label or packaging is intended to be  
associated with goods or services that are  
not those of the owner of the registered  
trade-mark, and  
(i) d’une part, elle sait ou devrait savoir  
que les étiquettes ou les emballages sont  
destinés à être associés à des produits ou  
services qui ne sont pas ceux du  
propriétaire de la marque de commerce  
déposée,  
(ii) the sale, distribution or advertisement  
of the goods or services in association  
with the label or packaging would be a  
sale, distribution or advertisement in  
association with a confusing trade-mark or  
trade-name; or  
(ii) d’autre part, la vente, la distribution  
ou l’annonce des produits ou services en  
liaison avec les étiquettes ou les  
emballages constituerait une vente, une  
distribution ou une annonce en liaison  
avec une marque de commerce ou un  
nom commercial créant de la confusion;  
d) soit fabrique, fait fabriquer, a en sa  
possession, importe, exporte ou tente  
d’exporter des étiquettes ou des emballages,  
quelle qu’en soit la forme, portant une  
marque de commerce ou un nom  
commercial, en vue de leur vente ou de leur  
distribution ou en vue de la vente, de la  
distribution ou de l’annonce de produits ou  
services en liaison avec ceux-ci, alors queꢀ:  
(d) manufactures, causes to be manufactured,  
possesses, imports, exports or attempts to  
export any label or packaging, in any form,  
bearing a trade-mark or trade-name, for the  
purpose of its sale or distribution or for the  
purpose of the sale, distribution or  
advertisement of goods or services in  
association with it, if  
(i) the person knows or ought to know that  
the label or packaging is intended to be  
associated with goods or services that are  
not those of the owner of the registered  
trade-mark, and  
(i) d’une part, elle sait ou devrait savoir  
que les étiquettes ou les emballages sont  
destinés à être associés à des produits ou  
services qui ne sont pas ceux du  
propriétaire de la marque de commerce  
déposée,  
(ii) the sale, distribution or advertisement  
of the goods or services in association  
with the label or packaging would be a  
sale, distribution or advertisement in  
association with a confusing trade-mark or  
trade-name.  
(ii) d’autre part, la vente, la distribution  
ou l’annonce des produits ou services en  
liaison avec les étiquettes ou les  
emballages constituerait une vente, une  
distribution ou une annonce en liaison  
avec une marque de commerce ou un  
nom commercial créant de la confusion.  
Depreciation of goodwill  
Dépréciation de l’achalandage  
Page: 75  
22 (1) No person shall use a trade-mark  
registered by another person in a manner that is  
likely to have the effect of depreciating the  
value of the goodwill attaching thereto.  
22 (1) Nul ne peut employer une marque de  
commerce déposée par une autre personne  
d’une manière susceptible d’entraîner la  
diminution de la valeur de l’achalandage  
attaché à cette marque de commerce.  
Action in respect thereof  
Action à cet égard  
(2) In any action in respect of a use of a trade-  
mark contrary to subsection (1), the court may  
decline to order the recovery of damages or  
profits and may permit the defendant to  
continue to sell goods marked with the trade-  
mark that were in his possession or under his  
control at the time notice was given to him that  
the owner of the registered trade-mark  
(2) Dans toute action concernant un emploi  
contraire au paragraphe (1), le tribunal peut  
refuser d’ordonner le recouvrement de  
dommages-intérêts ou de profits, et permettre  
au défendeur de continuer à vendre tous  
produits revêtus de cette marque de commerce  
qui étaient en sa possession ou sous son  
contrôle lorsque avis lui a été donné que le  
propriétaire de la marque de commerce  
déposée se plaignait de cet emploi  
complained of the use of the trade-mark.  
Applications for Registration  
of Trade-marks  
Demandes d’enregistrement de marques de  
commerce  
Contents of application  
Contenu d’une demande  
30 An applicant for the registration of a trade-  
30 Quiconque sollicite l’enregistrement d’une  
mark shall file with the Registrar an application marque de commerce produit au bureau du  
containing  
registraire une demande renfermant :  
…
…
(b) in the case of a trade-mark that has been  
b) dans le cas d’une marque de commerce  
qui a été employée au Canada, la date à  
compter de laquelle le requérant ou ses  
prédécesseurs en titre désignés, le cas  
échéant, ont ainsi employé la marque de  
commerce en liaison avec chacune des  
catégories générales de produits ou services  
décrites dans la demande;  
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;  
…
…
Disclaimer  
35 The Registrar may require an applicant for  
Désistement  
35 Le registraire peut requérir celui qui  
registration of a trade-mark to disclaim the right demande l’enregistrement d’une marque de  
to the exclusive use apart from the trade-mark of commerce de se désister du droit à l’usage  
such portion of the trade-mark as is not  
independently registrable, but the disclaimer  
does not prejudice or affect the applicant’s  
rights then existing or thereafter arising in the  
exclusif, en dehors de la marque de commerce,  
de telle partie de la marque qui n’est pas  
indépendamment enregistrable. Ce désistement  
ne porte pas préjudice ou atteinte aux droits du  
Page: 76  
disclaimed matter, nor does the disclaimer  
prejudice or affect the applicant’s right to  
registration on a subsequent application if the  
disclaimed matter has then become distinctive  
of the applicant’s goods or services.  
requérant, existant alors ou prenant naissance  
par la suite, dans la matière qui fait l’objet du  
désistement, ni ne porte préjudice ou atteinte  
au droit que possède le requérant à  
l’enregistrement lors d’une demande  
subséquente si la matière faisant l’objet du  
désistement est alors devenue distinctive des  
produits ou services du requérant.  
Statement of opposition  
Grounds  
Déclaration d’opposition  
Motifs  
(2) A statement of opposition may be based on  
(2) Cette opposition peut être fondée sur l’un  
any of the following grounds:  
des motifs suivants :  
(a) that the application does not conform to  
a) la demande ne satisfait pas aux exigences  
the requirements of section 30;  
de l’article 30;  
…
…
Transfer  
Transfert  
Trade-mark transferable  
Une marque de commerce est transférable  
48 (1) A trade-mark, whether registered or  
48 (1) Une marque de commerce, déposée ou  
unregistered, is transferable, and deemed always non, est transférable et est réputée avoir  
to have been transferable, either in connection  
with or separately from the goodwill of the  
business and in respect of either all or some of  
the goods or services in association with which  
it has been used.  
toujours été transférable, soit à l’égard de  
l’achalandage de l’entreprise, soit isolément, et  
soit à l’égard de la totalité, soit à l’égard  
quelques-uns des services ou produits en  
liaison avec lesquels elle a été employée.  
Licences  
Licences  
Licence to use trade-mark  
Licence d’emploi d’une marque de  
commerce  
50 (1) For the purposes of this Act, if an entity  
50 (1) Pour l’application de la présente loi, si  
is licensed by or with the authority of the owner une licence d’emploi d’une marque de  
of a trade-mark to use the trade-mark in a  
country and the owner has, under the licence,  
direct or indirect control of the character or  
quality of the goods or services, then the use,  
advertisement or display of the trade-mark in  
commerce est octroyée, pour un pays, à une  
entité par le propriétaire de la marque, ou avec  
son autorisation, et que celui-ci, aux termes de  
la licence, contrôle, directement ou  
indirectement, les caractéristiques ou la qualité  
that country as or in a trade-mark, trade-name or des produits et services, l’emploi, la publicité  
otherwise by that entity has, and is deemed  
always to have had, the same effect as such a  
ou l’exposition de la marque, dans ce pays, par  
cette entité comme marque de commerce, nom  
commercial — ou partie de ceux-ci — ou  
autrement ont le même effet et sont réputés  
Page: 77  
avoir toujours eu le même effet que s’il  
use, advertisement or display of the trade-mark  
in that country by the owner.  
s’agissait de ceux du propriétaire.  
Idem  
Licence d’emploi d’une marque de  
commerce  
(2) For the purposes of this Act, to the extent  
(2) Pour l’application de la présente loi, dans la  
that public notice is given of the fact that the use mesure où un avis public a été donné quant à  
of a trade-mark is a licensed use and of the  
identity of the owner, it shall be presumed,  
unless the contrary is proven, that the use is  
l’identité du propriétaire et au fait que l’emploi  
d’une marque de commerce fait l’objet d’une  
licence, cet emploi est réputé, sauf preuve  
licensed by the owner of the trade-mark and the contraire, avoir fait l’objet d’une licence du  
character or quality of the goods or services is  
under the control of the owner.  
propriétaire, et le contrôle des caractéristiques  
ou de la qualité des produits et services est  
réputé, sauf preuve contraire, être celui du  
propriétaire.  
Legal Proceedings  
Procédures judiciaires  
Exclusive jurisdiction of Federal Court  
Juridiction exclusive de la Cour fédérale  
57 (1) The Federal Court has exclusive original  
jurisdiction, on the application of the Registrar  
or of any person interested, to order that any  
57 (1) La Cour fédérale a une compétence  
initiale exclusive, sur demande du registraire  
ou de toute personne intéressée, pour ordonner  
entry in the register be struck out or amended on qu’une inscription dans le registre soit biffée  
the ground that at the date of the application the ou modifiée, parce que, à la date de cette  
entry as it appears on the register does not  
accurately express or define the existing rights  
of the person appearing to be the registered  
owner of the mark.  
demande, l’inscription figurant au registre  
n’exprime ou ne définit pas exactement les  
droits existants de la personne paraissant être le  
propriétaire inscrit de la marque.  
Restriction  
Restriction  
(2) No person is entitled to institute under this  
(2) Personne n’a le droit d’intenter, en vertu du  
section any proceeding calling into question any présent article, des procédures mettant en  
decision given by the Registrar of which that  
person had express notice and from which he  
had a right to appeal.  
question une décision rendue par le registraire,  
de laquelle cette personne avait reçu un avis  
formel et dont elle avait le droit d’interjeter  
appel.  
FEDERAL COURT  
SOLICITORS OF RECORD  
T-152-17  
DOCKET:  
MILANO PIZZA LTD. v 6034799 CANADA INC.;  
CHADI WANSA; YOUSSEF ZAHER, A.K.A. JOSEPH  
ZAHER; AND YOUSEF NASSAR, A.K.A. JOE  
NASSAR ET AL  
STYLE OF CAUSE:  
HELD BY VIDEOCONFERENCE  
FEBRUARY 15-19, 22-23, 2021  
PLACE OF HEARING:  
DATES OF HEARING:  
JUDGMENT AND REASONS:  
DATED:  
FUHRER J.  
MARCH 29, 2022  
APRIL 4, 2022  
AMENDMENT DATE  
APPEARANCES:  
Jaimie Bordman  
Ashley Chu  
FOR THE PLAINTIFF  
(DEFENDANTS BY COUNTERCLAIM)  
Michael D. Andrews  
FOR THE DEFENDANTS  
(PLAINTIFFS BY COUNTERCLAIM)  
SOLICITORS OF RECORD:  
Jaimie Bordman  
Ashley Chu  
FOR THE PLAINTIFF  
(DEFENDANTS BY COUNTERCLAIM)  
Macera & Jarzyna LLP  
Ottawa, Ontario  
Michael D. Andrews  
Andrews Robichaud  
Ottawa, Ontario  
FOR THE DEFENDANTS  
(PLAINTIFFS BY COUNTERCLAIM)  


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