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 Marksincluding, 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 YoussefKassis) 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