O P I C  
C I P O  
LE REGISTRAIRE DES MARQUES DE COMMERCE  
THE REGISTRAR OF TRADEMARKS  
Citation: 2022 TMOB 127  
Date of Decision: 2022-06-30  
IN THE MATTER OF AN OPPOSITION  
Galperti SRL  
and  
Opponent  
F.I.A.L. Finanziaria Industrie Alto Lario  
S.P.A  
Applicant  
1,599,754 for GALPERTI  
Application  
[1]  
Galperti SRL (the Opponent) opposes application no. 1,599,754 (the Application) for  
registration of the trademark GALPERTI (the Mark) filed by F.I.A.L. Finanziaria Industrie Alto  
Lario S.P.A (the Applicant).  
[2]  
The opposition is based primarily on the Opponent’s allegation that the Mark is  
confusing with its own trademarks and trade names featuring the word GALPERTI, used in  
Canada in association with similar metal hardware and building materials to those listed in the  
Application. Both parties trace their roots to family businesses established in Italy over a  
hundred years ago in connection with the family surname GALPERTI.  
[3]  
The opposition is successful. For the reasons that follow, I find that the Applicant is not  
entitled to registration of the Mark because it is confusing with the Opponent’s GALPERTI  
trademark and trade name that was used in Canada prior to the date of first use claimed in the  
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Application. I find the Applicant’s evidence insufficient to establish use of the Mark any earlier  
than claimed in the Application.  
[4]  
I note that the opposition is also based on allegations that the Applicant’s claimed date of  
first use is false, that the Applicant could not have been satisfied of its entitlement to use the  
Mark in Canada, and that the Mark is not distinctive of the Applicant; however, I find that the  
Opponent has failed to meet its evidential burden for these additional grounds of opposition and  
they are accordingly dismissed.  
THE RECORD  
[5]  
The Application was filed on October 25, 2015, based on use of the Mark in Canada in  
association with the following goods since at least as early as 1999:  
Common metals and their alloys; metal building materials, namely flanges, swivel ring  
assemblies, buckle arrestors, rolled rings and insulating joint; transportable buildings of  
metal; materials of metal for railway tracks; small items of metal hardware, namely  
flanges, swivel ring assemblies, buckle arrestors, rolled rings and insulating joints; pipes  
and tubes of metal; ironmongery in the form of metal hardware, namely connectors,  
valves, control products, namely, forgings, flanges, and fittings; row ball bearings,  
crossed roller bearings for use in the oil and gas and energy industry (the Goods).  
[6]  
The Application was advertised for opposition in the Trademarks Journal on  
November 5, 2014, and opposed on April 7, 2015, when the Opponent filed a statement of  
opposition pursuant to section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). The  
statement of opposition was subsequently amended, on October 22, 2015, to claim confusion  
with an additional trademark.  
[7]  
The grounds of opposition allege that the Application does not comply with the formal  
requirements of sections 30(b), 30(h), and 30(i) of the Act; that the Applicant is not entitled to  
registration under sections 16(1)(a) and 16(1)(c) of the Act; and that the Mark is not distinctive  
as defined in section 2 of the Act. The Applicant filed a counter statement on June 22, 2015,  
denying each of the allegations and grounds in the statement of opposition and further pleading  
that the section 30(i) ground alleging violation of section 7(b) of the Act is invalid. The blanket  
denial in the counter statement is broad enough to contest all of the grounds of opposition as  
amended.  
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[8]  
Numerous amendments to the Act came into force on June 17, 2019. Pursuant to the  
transitional provisions in section 70 of the Act for applications advertised before June 17, 2019,  
the grounds of opposition will be assessed based on the Act as it read immediately before  
amendment, an exception being that the definition of confusion in sections 6(2) to 6(4) of the Act  
as it currently reads will be applied.  
[9]  
In support of its opposition, the Opponent filed the following evidence:  
The affidavit of its President, Dina Galperti, which is dated October 21, 2015.  
Ms. Galperti provides background information on the history and business of the  
Opponent and its predecessor in title, describing in particular their use and promotion of  
GALPERTI trademarks and trade names over the years. Ms. Galperti was cross-  
examined on her affidavit and the transcript is of record.  
[10] In support of the Application, the Applicant filed the following evidence:  
The affidavit of the Chairman of its Board of Directors, Guido Puccio, which is dated  
January 4, 2017. Mr. Puccio provides background information on the history and  
business of the Applicant and its predecessor in title and describes their use and  
promotion of the Mark. Mr. Puccio was cross-examined on his affidavit; the transcript  
and answers to undertakings are of record.  
The affidavit of John Wray, which is dated September 7, 2017. Mr. Wray was President  
of Galperti Canada ULC, an indirect subsidiary of the Applicant, between 2000 and 2015,  
and before that was employed by Comco Pipe and Supply Company, a division of Russel  
Metals Inc., (Comco) from 1972 to 1999. He describes how the Opponent’s products  
received in Canada are packaged and attests to Comco conducting business with a  
member of the Applicant’s group of companies prior to the date of first use claimed in the  
Application. Mr. Wray was not cross-examined.  
[11] I note that I have disregarded Ms. Galperti’s and Mr. Puccio’s opinions on how the  
parties’ trademarks and trade names are known in Canada. Neither affiant has been established  
as an expert in human behaviour and neither affiant is independent of the parties. I am therefore  
not prepared to give their opinions on consumer perceptions any weight.  
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[12] Only the Applicant filed written arguments but both parties were represented at an oral  
hearing.  
PRELIMINARY MATTER: ADMISSIBILITY OF GALPERTI AFFIDAVIT  
[13] As a preliminary matter, the Applicant submits that much of Ms. Galperti’s evidence is  
inadmissible hearsay, imprecise, and unreliable, with no basis being provided for much of the  
historical information, including the date business began in Canada [paras 11, 50]. The Applicant  
submits that Ms. Galperti’s evidence, especially as it relates to events predating 1996, should be  
“treated with skepticism”, given the lack of clarity surrounding her role at that time and given  
that her affidavit is “less than forthright” in that regard [paras 11-13, 49].  
[14] In this last respect, while Ms. Galperti states in her affidavit that she had been a  
consultant” of the Opponent’s predecessor in title “for some years” prior to becoming its  
president in 1996 [para 1], she admitted during cross-examination that she did not have a paid  
position or contract with the company at that time but was rather assisting her fatherwho was  
the president and managing director at the timein their family-run business [Q58-61]. Further,  
she was unable to provide the date when she started working for the company in this way, stating  
merely that it was for “many years, from always”, that “I was very close to my father in all his  
activities form always onward”, and that “I lived and experienced activities and know the  
activities of my father since I can remember; forever” [Q62-64].  
[15] I do not find Ms. Galperti’s characterization of her role as that of a “consultant” to be  
inconsistent with the information provided during cross-examination. There is no indication that  
the assistance or “support activity” she provided to her father did not include advice or  
consultation, and her stated long-standing familiarity with the family business would not be  
inconsistent with such a role. Furthermore, I do not find it problematic that she began by  
assisting her father on a volunteer business or cannot remember precisely when that assistance  
started or took on a consultancy aspect. It remains that she was in a position to assume the role of  
president and managing director of the Opponent’s predecessor from her father in 1996 and did  
so; that she became the managing director of the Opponent when it acquired the predecessor’s  
business in 2000; that she then also became the president of the Opponent in 2003; and that in  
her role as president and managing director she has access to the Opponent’s business records. In  
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the absence of evidence to the contrary, and given the nature of the family business as described  
by Ms. Galperti, I am prepared to infer that the Opponent’s business records would also include  
those of the business acquired from its predecessor and that Ms. Galperti would have personal  
knowledge of the acquired business and of the record keeping of both entities.  
[16] Indeed, Ms. Galperti specifically states that, in her capacity with the Opponent, she has  
detailed knowledge of its business, including its commercial activities in Canada [para 2]. Given  
the nature of her positions and responsibilities with the Opponent and its predecessor, I accept  
that she would generally be knowledgeable about the branding, sale, and distribution of their  
products, and have a sufficient basis to make the statements in her affidavit, including  
recognizing representative examples of packaging and branding and attesting to the authenticity  
and reliability of documents obtained from the Opponent’s business records.  
[17] In the circumstances, I accept that Ms. Galperti’s statements regarding the activities of  
the Opponent and its predecessor and the business records attached as exhibits to her affidavit  
are admissible.  
EVIDENTIAL BURDEN AND LEGAL ONUS  
[18] In an opposition proceeding, the legal onus is on the applicant to show that its application  
complies with the provisions of the Act. However, for each ground of opposition, there is an  
initial evidential burden on the opponent to adduce sufficient admissible evidence from which it  
could reasonably be concluded that the facts alleged to support that ground of opposition exist. If  
this initial burden is met, then the applicant must satisfy the Registrar, on a balance of  
probabilities, that the ground of opposition should not prevent registration of the trademark at  
issue [Joseph E Seagram & Sons Ltd v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325  
(TMOB); John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD)].  
GROUND OF OPPOSITION BASED ON ENTITLEMENT TO REGISTRATION UNDER SECTION 16(1)(A)  
[19] The Opponent pleads that the Applicant is not the person entitled to secure the  
registration sought because, at the Applicant’s claimed date of first use and at any relevant time,  
the Mark was confusing with the Opponent’s GALPERTI word mark (Opponent’s Mark) and  
corresponding design mark, which had been previously used or made known in Canada by the  
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Opponent or its predecessors in title (or for their benefit, by licensees), for the following goods  
and services:  
for goods in the filed of common metals and their alloys; metal building materials;  
transportable buildings of metal; materials of metal for railway tracks; non-electric cables  
and wires of common metal; ironmongery, small items of metal hardware; pipes and  
tubes of metal; flanges, ring-shaped fittings of metal, forging; safes; ores, as well as for  
related services associated with the manufacturing and distribution of said products.  
[20] The Opponent’s pleaded design mark (Opponent’s Logo) consists of the word  
GALPERTI in capital lettering, featuring a darker G that overlaps the A and is preceded by three  
crescentsgiving the appearance of four overlapping Gswith the word OFFICINE in fine  
print across the Gs and the word “F.lli” in stylized lettering within the G and A:  
Opponent’s Logo  
[21] To meet its initial burden, the Opponent must demonstrate that it or its predecessor in title  
used or made known the trademark on which the Opponent relies prior to the Applicant’s date of  
first use, in accordance with sections 16(1)(a) and 17(1) of the Act, and also that the trademark  
relied upon had not been abandoned when the Application was advertised, as stipulated in  
section 16(5).  
Whether an opponent’s use must be continuous to meet the initial burden  
[22] The Applicant submits that an opponent relying on prior use of a trademark must  
demonstrate that such use was continuous up to the date of advertisement. However, I do not  
agree with the Applicant’s position. In contrast to section 30(b) of the Act, which requires that an  
application contain the date from which the applicant’s mark has been used, section 16(1)(a) of  
the Act merely requires that an opponent’s trademark have been previously used at the date on  
which the applicant first used its mark. The Federal Court confirmed in JC Penney Co v  
Gaberdine Clothing Co, 2001 FCT 1333, that section 16 of the Act does not impose any  
requirements concerning the opponent’s length of use; so long as the trademark relied upon  
6
functions as a trademark, a single instance of its use within the meaning of section 4 of the Act  
may suffice for an opponent to meet its burden.  
[23] Separately, section 16(5) of the Act requires that the opponent’s trademark not be  
abandoned at the date the application was advertised. However, abandonment requires not only  
an absence of use but also an intention to abandon use [Labatt Brewing Co v Formosa Spring  
Brewery Ltd (1992), 42 CPR (3d) 481 (FCTD); Marineland Inc v Marine Wonderland and  
Animal Park Ltd (1974), 16 CPR (2d) 97 (FCTD)]. Accordingly, on its own, an interruption in  
useeven one that is outside the normal course of tradedoes not necessarily lead to a  
conclusion that the trademark has been abandoned.  
[24] The Applicant cites Redsand Inc v Dylex Ltd (1997), 74 CPR (3d) 373 (FCTD), for the  
proposition that, in order to support a non-entitlement ground of opposition, an opponent’s use  
must be both in the normal course of trade and continuous up to the date of advertisement  
[written argument paras 70, 77]. The Applicant submits that the Registrar has followed this  
approach, for example, in Brandstorm Inc v Naturally Splendid Enterprises Ltd, 2018 TMOB 95,  
rev’d 2021 FC 73. Conversely, the Opponent submits that the Registrar has found an opponent’s  
use need not necessarily be continuous to the date of advertisement, citing, for example,  
Whirlpool Canada LP v Alliance Laundry Systems LLC, 2021 TMOB 97. In that case, the  
Registrar referenced the Federal Court of Appeal’s confirmation in Iwasaki Electric Co Ltd v  
Hortilux Schreder BV, 2012 FCA 321, that section 16(5) of the Act is not based on cessation of a  
trademark’s use but rather on the trademark’s abandonment.  
[25] I am unable to find that Redsand stands for the Applicant’s proposition. The Federal  
Court’s statement in that case was not that an opponent’s use must continue to the date of  
advertisement but rather only that, “[i]n order for there to be ‘use’ of a trade-mark within the  
meaning of the Act, that use must be continuous and in the ordinary course of trade” [at para 36].  
In my view, the reference to continuous use in this context was meant in the sense of there being  
a “course of trade”. I reach this conclusion for several reasons:  
Redsand cites only Labatt Brewing Co v Benson & Hedges (Canada) Ltd (1996), 67 CPR  
(3d) 258 (FCTD) [Benson & Hedges], for the proposition that use must be continuous.  
However, the Federal Court in Benson & Hedges established only that section 30(b) of  
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the Act requires continuous use, and expressly stated that this conclusion is reached  
because (i) section 30(b) requires an applicant to provide the date “from which” the  
trademark has been used and (ii) the template application form under the Act (Form I)  
provides that the applicant is to give dates sincewhen the trademark has been used.  
Section 16 of the Act does not contain the same language regarding use “from” or “since”  
the material date. Indeed, the Court in Benson & Hedges specifically distinguished the  
requirement in section 16 that an opponent’s trademark not be abandoned.  
The Federal Court in Redsand stated that use must be continuous to be within the  
meaning of the Act” after citing the definitions of “trade-mark” and “use” in sections 2  
and 4, not after citing the requirements of section 16 [at paras 35-36]. In this sense, the  
context is similar to that in Benson & Hedges, where it was stated that the language  
requiring an applicant to have continuous use of a trade mark in the normal course of  
tradeappears in section 4. However, section 4 references only the normal course of trade  
and not continuity. Indeed, the Court’s finding in Redsand was ultimately that the only  
activity appearing to have occurred before the material date was a single transaction, in  
which the goods were sent not to Canada but to an address in the state of Washington,  
which is not indicative of a normal commercial transaction in the ordinary course of  
trade[para 36]. There was no consideration of whether the opponent was additionally  
required to show continuous use up to the date of advertisement.  
Similarly, in Brandstorm, the Registrar’s reasons for refusing to accept a single invoice  
as evidence of use were that display of the trademark at the time of transfer had not been  
established; it was unclear whether the invoiced goods were ultimately transferred and  
sold in Canada; and the opponent provided “no clear evidence as to the normal course of  
trade” and “no evidence of volume or dollar value of sales … from which its normal  
course of trade could possibly be inferred” [at paras 31-34]. The Registrar further noted  
that, since the opponent had provided no further evidence of transfers, it had not  
demonstrated non-abandonment at the date of advertisement [at para 35]. Accordingly,  
continuous use is referenced in the context of determining that the opponent failed to  
establish prior use in the normal course of trade and non-abandonment. The possibility of  
8
a third requirement, namely to show continuous use up to the date of advertisement, was  
not discussed.  
[26] In view of the foregoing, the Opponent will meet its initial burden if it succeeds in  
demonstrating use of its trademark in the normal course of trade prior to the Applicant’s first use  
and also that its trademark had not been abandoned when the Application was advertised.  
Determination of the material date  
[27] In most cases, an applicant’s date of first use will be the date claimed in its trademark  
application; however, an applicant is at liberty to establish an earlier date through evidence [see  
Datascope of Canada Ltd v Datascope Corp (1998), 81 CPR (3d) 420 (FCTD); and DeCaria  
Hair Studio Ltd v Massimo De Berardinis et al (1984), 2 CPR (3d) 309 (TMOB)]. Conversely,  
where an opponent succeeds in challenging the claimed date of first use under a section 30(b)  
ground of opposition, the material date for assessing entitlement to registration under section  
16(1) of the Act may become the applicant’s filing date [see e.g. Everything for a Dollar Store  
(Canada) Inc v Dollar Plus Bargain Centre Ltd (1998), 86 CPR (3d) 269 (TMOB)].  
[28] In the present case, the date of first use claimed in the Application is “since at least as  
early as 1999”. However, the Applicant contends that it has demonstrated continuous use of the  
Mark in Canada since 1985, such that 1985 should be the material date. Conversely, the  
Opponent challenges the Applicant’s claim to have used the Mark prior to filing and contends  
that confusion should be assessed at the Application’s filing date.  
[29] As noted above, compliance with section 30(b) requires that a trademark be used  
continuously in the normal course of trade from the date of first use claimed to the filing date of  
the application [see Benson & Hedges, supra; Ivy Lea Shirt Co v Muskoka Fine Watercraft &  
Supply Co, 2001 FCT 253]. Accordingly, to establish an earlier material date, the Applicant must  
show continuous use of the Mark from the new date claimed to the filing date of the Application.  
[30] Section 4(1) of the Act deems a trademark 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 packages in which they  
9
are distributed or it is in any other manner so associated with the goods that notice of the  
association is then given to the person to whom the property or possession is transferred.  
[31] I find the Opponent’s challenges to the Applicant’s claimed date of first use to be  
unsuccessful, for the reasons discussed below. Accordingly, the material date will be the last day  
of 1999, unless the Applicant is able to establish an earlier date of first use [see Lise Watier  
Cosmétiques Inc v Villoresi, 2009 CarswellNat 1700 (TMOB), re treating the last day of the  
month or year as the material date when only the month or year are provided].  
The Applicant’s date of first use  
[32] In seeking to establish use of the Mark since at least as early as 1985, the Applicant relies  
on the affidavit of Mr. Puccio, who speaks to use of the Mark in Canada as of the 1990s, and on  
the affidavit of Mr. Wray, who speaks to use of the Mark in Canada in the 1980s.  
Mr. Puccio’s evidence  
[33] Mr. Puccio explains that the Applicant’s business traces its roots to the founding of  
Officine Nicola Galperti e Figlio S.p.A. (Officine Nicola) in Italy in 1921 [para 4]. Since the  
1950s, the business has focused on the manufacture of flanges and special forged products for  
the oil and gas, chemical and petrochemical, power generation and pipeline industries [para 4].  
The Applicant was established in Italy in 1982 as a holding company for Officine Nicola and  
related entities working in the engineering and production of forged connectors, valves, and fluid  
control products for the oil and gas industrythe Galperti Group [para 2].  
[34] Mr. Puccio explains that the goods sold in Canada are manufactured in Italy either by  
Officine Nicola or by Galperti Engineering and Flow Control S.p.A. (Galperti Engineering), or  
in the United States by Galperti Inc. (Galperti U.S.) [Q95-96]. The goods are then typically sold  
in Canada either directly by the manufacturing company or through the Applicant’s Canadian  
subsidiary [paras 10-11, Q105-107]. The Applicant’s original Canadian subsidiary, Galperti  
Canada Inc., was created in 1989 to promote the Applicant’s goods that were already being sold  
in Canada [para 5, Q53-54, Q135, Q157]. It was subsequently replaced by a new subsidiary,  
incorporated federally as Galperti Canada (1999) Inc. in 1999 and then continued into Alberta  
under the name Galperti Canada ULC on August 3, 2007. As of 2001, the new subsidiary  
10  
(Galperti Canada) not only promoted but also sold the Applicant’s goods [para 5, Q130-136,  
Q163-164, Q174-176, Q341-343]. The companies manufacturing the goods and the Canadian  
subsidiaries are all members of the Galperti Group.  
[35] Mr. Puccio confirms that each member of the Galperti Group is licensed to use the Mark  
as part of its corporate or trade name, as part of a domain name, and in association with products  
manufactured, marketed, or sold by it, and that by virtue of this licence the Applicant has direct  
or indirect control of the character or quality of the goods sold in association with the Mark  
[para 3, Q108-111]. He further confirms that this licence has been in place as an oral agreement  
since Officine Nicola’s acquisition by the Applicant; that manufacturing companies in the  
Galperti Group are added to the licence agreement from the moment of their incorporation; and  
that the Applicant has had continuous control over the quality of the goods and services offered  
by the Canadian subsidiaries since their inception [para 5, Q112-114]. In the circumstances, I am  
satisfied that any use of the Mark in Canada by a member of the Galperti Group has enured to  
the Applicant’s benefit under section 50(1) of the Act.  
[36] Mr. Puccio states that the Mark is used in association with the goods either on its own or  
in association with a distinctive G design(G Logo), for example, in the manner shown at  
para 6 of his affidavit and reproduced below (GALPERTI GROUP Logo):  
GALPERTI GROUP Logo  
[37] The G Logo consists of a capital letter G within a studded ring on a square background.  
The entire GALPERTI GROUP Logo consists of the underlined word GALPERTI in stylized  
capital lettering, with the word GROUP in small lettering of the same style within the underline,  
and the words “The Original” in cursive below the underline, all to the right of the G Logo.  
11  
[38] As evidence of use of the Mark in Canada, Mr. Puccio provides representative invoices  
from 1993 to 2015 for sales of goods by members of the Galperti Group to customers in Canada  
[paras 10-11, Exhibits C-D], as well as a representative photograph of product packaging  
depicting the manner in which the Mark has been used in Canada since at least as early as 1993  
and prior” [para 12, Exhibit E]. He also stated under cross-examination that he was 100 per cent  
sure” that Officine Nicola was selling in Canada prior to the incorporation of the Canadian  
subsidiary in 1989 [Q52-54]; however, in the absence of evidence establishing how the Mark  
was used at that time, this statement alone is insufficient to establish an earlier date of first use.  
[39] At the top of each exhibited invoice, the G Logo is displayed next to the name and  
address of Officine Nicola, Galperti Engineering, or Galperti Canada ULC. The only product  
descriptions containing the word GALPERTI are from after 1999, but none of the exhibited  
invoices from 1999 or earlier appears to reference any other trademarks in the product  
descriptions or to include the goods of any other manufacturer. Moreover, Mr. Puccio confirmed  
during cross-examination that a hard copy of the invoice accompanies each shipment of goods  
and stays with the goods until they reach their destination [Q349-353]. He also noted that, at the  
client’s request, goods purchased by the client may be shipped to a different company; for  
example, Exhibit D contains invoices for goods purchased by the supply company Comco that  
were shipped to Shell [Q265-267].  
[40] However, I find that the invoices establish only trade name use of the names Officine  
Nicola Galperti e Figlio S.p.A., Galperti Engineering and Flow Control S.p.A., and Galperti  
Canada ULC, without simultaneous use of the Mark as a trademark. In none of the cases does  
the Mark stand out in such a way that display of the entire trade name might constitute use of the  
Mark alone as a trademark. Instead, the trade names are displayed in nearly uniform plain  
lettering only slightly larger than the return address. The minor variations in the lettering on the  
earlier invoices do not emphasize the Mark (the word “Officine” is slightly smaller than and  
above “Nicola Galperti e Figlio S.p.A.” prior to November 1994 and the phrase “and Flow  
Control srl” is in cursive slightly smaller than and below “GALPERTI ENGINEERING” prior  
to October 2002). In my view, the trade names as displayed on these invoices merely identify the  
specific company within the Galperti Group through which the purchase was made, and not  
necessarily the goods’ source of origin [see section 2 of the Act, which defines a trademark as a  
12  
mark used by a person to distinguish goods or services and a trade name as the name under  
which a business is carried on]. Even if GALPERTI may be perceived as the most inherently  
distinctive element within each trade name, I am not satisfied that purchasers would also see it as  
the brand of the goods in this particular context. I find it at least as likely that only the G Logo  
would be perceived as a brand or that no particular brand would be identified.  
[41] Similarly, I find that a sale of Goods in the exhibited product packaginga cardboard  
box displaying “GALPERTI CANADA INC.” in boldface, in a plain font above the company’s  
address in the same font and sizeconstitutes only trade name use of Galperti Canada Inc. to  
identify the local contact for Canada. The word GALPERTI does not stand out from the entire  
name and address on the box and I am not satisfied that it would be perceived as the brand of the  
goods shipped in the box. I find it at least as likely that only the large G Logo displayed above  
the name would be perceived as a brand or that no particular brand would be identified.  
[42] Under cross-examination, Mr. Puccio was shown some undated photographs of a  
different type of packaging, which he stated was the type of packaging in which flanges  
“always” get packed [Q325-329]. He initially stated that the trademark displayed on this  
packaging “is always the same” [Q329], but later specified that one aspect of the trademark as  
displayed in the photographs was only in use “I think probably from 2007. Maybe even before,  
but I am not that really sure” [Q336]. The images were marked as exhibits to the cross-  
examination for identification purposes only, since the Opponent objected to entering them into  
evidence as part of the cross-examination; however, the Applicant reserved its right to request  
leave to add the photographs to Exhibit E of Mr. Puccio’s affidavit, on the basis that they were  
intended to be included in that exhibit but were inadvertently omitted [transcript pages 9-10].  
[43] Ultimately, no such amendment was requested. Instead, similar photographs were  
furnished in answer to an undertaking taken under advisement, where they are identified as being  
“representative of the packaging for the invoiced goods … as sold in Canada in association with  
the Galperti mark, during the 1999 to 2016 time frame” [U/A 129]. The packaging consists of  
clear plastic wrapping that displays the GALPERTI GROUP Logo above Officine Nicola’s trade  
name, with this logo also being displayed in a repeating sequence on tape that affixes a label to  
13  
the package. The label displays a version of the G Logo and Officine Nicola’s trade name in the  
upper left corner and “GALPERTI CANADA” above a bar code in the centre.  
[44] As there was ultimately no amendment made to Mr. Puccio’s affidavit, the photographs  
in the answers to undertakings cannot be considered part of the exhibit representing the manner  
in which the Mark has been used in Canada “since at least as early as 1993 and prior” [para 12,  
Exhibit E]. At best, the photographs might be accepted as they are described in the answers to  
undertakings, namely representative of the packaging for goods sold in Canada from 1999 to  
2016. However, in the absence of evidence as to when in 1999 such use took place, these  
photographs cannot serve to establish an earlier date of first use.  
[45] I would also note that Mr. Puccio attaches, as Exhibit G to his affidavit, six letters from  
Canadian suppliers and distributors of products to companies in the oil & gas and energy sectors,  
who confirm having done business with members of the Galperti Group. One of these suppliers  
and distributors is Comco, whose president and general manager in 2016 confirms having  
received flanges and other products from members of the Galperti Group since 1992, while two  
other suppliers confirm having received products since 1999. However, hearsay issues aside,  
such letters do not assist the Applicant, because they do not mention awareness of any particular  
trademarks being used.  
Mr. Wray’s evidence  
[46] In his affidavit, Mr. Wray attests to being personally aware that (i) Galperti Group sold  
products “in association with the GALPERTI trademark and name” into Canada “well prior to  
the establishment of its Canadian subsidiaryand that (ii) as early as 1985, Comco was  
conducting business with [Officine Nicole] when an order of forged steel flanges was placed and  
shipped into Canada” [para 4]. He confirms that when products such as flanges are shipped into  
Canada they “generally” are packaged in plastic wrapping that bears the Mark, and the body of  
his affidavit includes three photographs of such packaging, which he states is representative of  
the manner in which products have been shipped to and distributed within Canada for as long as  
he can recall, dating back to “at lest as early as 1985” [paras 4-5]. The photographs are  
essentially the same as those provided in answer to the undertaking discussed above, showing the  
GALPERTI GROUP Logo on plastic wrapping and tape along with Officine Nicola’s trade  
14  
name. Although Mr. Wray does not specify when the photographs were taken, Mr. Puccio stated  
under cross-examination that the phrase “The Original” has been used in the Applicant’s  
trademark probably from 2007 [Q336]. Thus it appears likely that the depicted packaging,  
featuring a logo with this phrase, dates from 2007 or later.  
[47] Mr. Wray attests that, although the logo may have changed slightlyover the years, his  
recollection is that the Mark has always appeared on the wrapping in this manner [para 5].  
However, in the absence of information as to the nature of the “slight changes”, I am not  
prepared to accept that use of an earlier version of the logo would have necessarily constituted  
use of the Mark. Indeed, as discussed above, Mr. Puccio’s representative photograph showing  
how the Mark has been used on product packaging in Canada “since at least as early as 1993 and  
prior” displays only the G Logo and the Canadian subsidiary’s trade name.  
[48] I also find that Mr. Wray provides insufficient detail regarding the 1985 transaction to  
assess whether it qualifies as a transfer of goods in the normal course of trade, to meet the  
requirements of section 4 of the Act. In particular, although he states that Comco was  
“conducting business” with Officine Nicola, he does not specify whether they were engaged in  
actual trade at the time or, for example, merely in negotiations. Nor does he specify by whom the  
“order of forged steel flanges was placed and shipped” and whether the flanges in question were  
actually purchased or, for example, ordered as samples. I note that, in the letters from suppliers  
and distributors at Exhibit G to Mr. Puccio’s affidavit, the president and general manager of  
Comco wrote that Comco has been supplied with goods by members of the Galperti Group  
“since 1992”. In the circumstances, and in the absence of any further explanation, detail, or  
supporting documentation from Mr. Wray, I am not prepared to infer that the 1985 order  
necessarily represented a transfer of goods in the normal course of trade.  
Conclusion with respect to the Applicant’s date of first use  
[49] In view of the foregoing, I find that the Applicant’s evidence is insufficient to establish  
an earlier date of first use and accordingly the material date remains the last day of 1999.  
Therefore, to meet its evidential burden, the Opponent must show that its trademark was used or  
made known in Canada prior to December 31, 1999, and had not been abandoned when the  
Application was advertised for opposition on November 5, 2014.  
15  
Whether the Opponent’s evidence meets its initial burden  
[50] To meet its evidential burden, the Opponent relies on the affidavit of Ms. Galperti.  
[51] Ms. Galperti explains that the Opponent’s roots in the field of metalworking date back to  
the founding of the family business in Italy in 1740 [paras 7-9]. The business is currently carried  
on by the Opponent, who purchased it from the predecessor F.lli Galperti fu Paolo s.r.l.,  
sometimes referred to simply as “F.lli Galperti s.r.l.”, on June 21, 2000 [para 6]. Today, the  
company manufactures “flanges, rings, discs and special forgings for piping in metal materials”  
(Opponent’s Products) for the chemical, hydropower, and oil & gas industries, and exports such  
products worldwide, including to Canada [paras 5, 7]. The Opponent’s product line is described  
on its website as products of steel, nickel alloy, copper alloy, and titanium, including flanges,  
rings, nozzles, ball-valve components, and special forgings, the latter being “forgings according  
to customer drawings” [Exhibit DG-4].  
[52] Ms. Galperti states that the Opponent’s GALPERTI trademark is the only trademark used  
in association with the Opponent’s Products and that it has been so used in Canada since the  
beginning of the 1980s [para 11]. While the products themselves are only engraved with a G  
symbolas the “manufacturing logo” required by international standardsthe GALPERTI  
trademark is displayed on the packaging of products sold and shipped to customers worldwide,  
including in Canada, and Ms. Galperti attaches as Exhibit DG-6 to her affidavit representative  
photographs of the packaging used for this purpose since 2000 [paras 12-13, Exhibits DG-5-  
DG-6, Q208-213]. She attests that the GALPERTI trademark was also displayed on the  
packaging of the Opponent’s Products delivered to customers in Canada prior to 1999, with  
minor variations as shown on the invoices issued prior to 1999 [para 13]. Ms. Galperti further  
attests that the GALPERTI trademark has always been prominently displayed at the top of the  
invoices, which always accompanied the products’ delivery into Canada [para 14].  
[53] As Exhibit DG-7 to her affidavit, Ms. Galperti attaches representative invoices, some  
with related customs and/or shipping documents, showing sales of the Opponent’s Products to  
Canadian clients from 1988 to 2013. She confirms that the only products referenced in the  
exhibited invoices are the Opponent’s Products, manufactured and sold by the Opponent  
[para 14]. The invoices may be divided into three sets. The first contains a single 1988 invoice  
16  
for stainless steel flanges addressed from F.LLI GALPERTI to Jorda Forgings & Castings Sales  
Ltd. in Mississauga, Ontario. The second consists of six invoices for stainless steel flanges and  
related documents dating from 1991 to 1997, addressed from F.LLI GALPERTI SRL to Jorda  
Forgings & Castings Sales Ltd. (1991-1993), Jorda Group of Companies (1995), and Jorda  
Stainless Inc. (1997) in Mississauga. The third contains approximately three dozen invoices and  
related documents dating from 2006 to 2013, each from GALPERTI SRL to either Allied Fitting  
Canada in Sherwood Park, Alberta, or Tri-Lad Flange & Fittings Inc. in Paris, Ontario. The  
invoices in this third set identify the products sold only by alphanumeric codes, but the  
corresponding customs and shipping documents, written in Italian, reference “flange” in what  
appear to be product description fields.  
[54] I note at the outset that I do not consider the display of the trade name F.LLI GALPERTI  
above the company’s address at the top of the 1988 invoice to constitute a use of GALPERTI as  
either a trademark or trade name. Although Ms. Galperti attests that “F.lli” is short for “Fratelli”,  
meaning “Brothers” [para 6, Q37-39], there is no evidence that this meaning would be known to  
the average Canadian purchaser of the parties’ goods or that such purchasers would view F.LLI  
as anything other than a coined or foreign word forming the first word of a two-word trade name.  
In my view, this impression is reinforced by the logo to the left of the F.LLI GALPERTI name  
and address, consisting of the letters FG on a circular background, as reproduced below:  
[55]  
In the circumstances, I am not satisfied that the word GALPERTI stands out as a  
separate trademark or trade name.  
[56] However, I am prepared to find that display of the Opponent’s Logo at the top of the  
remaining invoicesthe earliest of which is from 1991constitutes a display of both the  
Opponent’s Mark and the Opponent’s Logo.  
[57] Although the Opponent’s Logo in these instances is followed by the letters “srl” or  
“SRL” in fine print, the word mark GALPERTI stands out by virtue of its much larger size and  
stylization. I reach a similar conclusion regarding the words OFFICINE and F.lli” in the  
17  
Opponent’s Logo as pleaded and as displayed on the invoices from 1991 to 1997. I find the  
nestling of these elements within the stylized G sufficiently subtle to constitute an acceptable  
deviation: both words are in much smaller lettering and their arrangement, as well as the high  
degree of stylization in the word “F.lli”, creates what is in my view primarily a decorative effect.  
The word mark GALPERTI, by virtue of its relative size and dominant position, stands out, has  
not lost its identity, and remains recognizable. [For the principles regarding use of a trademark  
with additional elements and stylization, see Canada (Registrar of Trade Marks) v Cie  
International pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FCA);  
Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB); and Stikeman, Elliot  
v Wm Wrigley Jr Co (2001), 14 CPR (4th) 393 (TMOB).]  
[58]  
For similar reasons, I consider omission of the words OFFICINE and F.LLI in the  
displays of the Opponent’s Logo as of 2006 to be only a minor deviation from the Opponent’s  
Logo as pleaded [per the principles regarding preservation of dominant features set out in  
Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA)].  
[59] Further, I am satisfied that such displays of the Opponent’s Mark and Opponent’s Logo  
constitute simultaneous trademark and trade name use [see Consumers Distributing Co/Cie  
Distribution aux Consommateurs v Toy World Ltd, 1990 CarswellNat 1398 (TMOB) re  
trademark and trade name use not being mutually exclusive]. Although not necessarily  
determinative, I find that the placement of the trademark registration symbol ® to the right of the  
word GALPERTI in the Opponent’s Logo contributes to the likelihood that not only a trade  
name but also a trademark would be perceived. Moreover, I am satisfied that a notice of  
association is given between this trademark and the individual products listed in the invoices,  
given the prominence of the trademark and the absence of any other apparent trademarks or  
references to other manufacturers in the invoices [for the major factors to consider in this regard,  
see Tint King of California Inc v Canada (Registrar of Trade Marks), 2006 FC 1440, 56 CPR  
(4th) 223; and Hortilux Schreder BV v Iwasaki Electric Co, 2012 FCA 321].  
[60] I am also satisfied that display of the Opponent’s Mark and Opponent’s Logo on the  
packaging depicted at Exhibit DG-6 constitutes trademark use when the invoiced goods are  
delivered in such packaging to purchasers in Canada. The packaging in question consists of  
18  
plastic wrapping crisscrossed with tape, the tape being marked with a repeating pattern of the  
post-2006 version of the Opponent’s Logo. A phrase that cannot be made out in the photographs  
is printed in small lettering underneath each display of the logo, but I am satisfied that the  
Opponent’s Logo, by virtue of its size and position, stands out as a separate trademark.  
[61] Although Ms. Galperti admitted during cross-examination that she does not know when  
the photographs at Exhibit DG-6 were taken [Q215], she attests that they are representative of  
the packaging used since 2000 and that the variations to the Opponent’s Mark on earlier  
packaging were as shown on the invoices issued prior to 1999 [para 13]. I am thus satisfied that  
the Opponent’s Mark and Opponent’s Logo were displayed in a similar manner on the packaging  
of the invoiced goods delivered to Canada prior to 1999, with the trademark appearing on the  
packaging as it does on the corresponding invoice.  
[62] The Applicant submits that, under cross-examination, Ms. Galperti was unable to confirm  
that the invoiced goods were actually received in Canada in packaging that appeared as depicted  
or that that the invoices themselves arrived in Canada [written argument paras 56, 71]. The  
Applicant further submitted at the oral hearing that no context is provided for the earliest  
invoices and thus it is not possible to determine whether they represent transfers in the normal  
course of trade.  
[63] However, I find it reasonable to infer that the goods listed in the exhibited invoices and  
shipping documents, stamped by customs officials, were shipped as indicated on those  
documents [Q238-248]. Moreover, Ms. Galperti confirmed under cross-examination that Jarda  
Group is a client she knows very well, to which shipments were made on a regular basis,  
following which the Opponent normally saw payment arrive, and although she did not personally  
travel to Canada to verify, she was confident she would have been contacted had the shipments  
not arrived to Jarda Group’s warehouse in their protective packaging [Q242, Q250-254, Q280,  
Q289-291]. I am satisfied that Ms. Galperti, by virtue of her position, would generally be  
knowledgeable about whether shipments containing hundreds of flanges were arriving to the  
Opponent’s regular clients in accordance with the Opponent’s obligations. In view of the  
foregoing, I am satisfied that the exhibited documents support her statements regarding sales of  
branded goods to Canada and that such sales were made in the normal course of trade.  
19  
[64] The Applicant further submits that the Opponent’s evidence is undermined by a lack of  
clarity regarding the relationships between the Opponent and its predecessor(s) and regarding the  
chain of title for the Opponent’s Mark and Opponent’s Logo. In this respect, the Applicant notes  
that Ms. Galperti refers to F.lli Galperti s.r.l. as the Opponent’s predecessor, yet she furnished  
pre-2000 invoices from F.lli Galperti and Officine F.lli Galperti s.r.l., and moreover she states  
that the business was purchased from F.lli Galperti fu Paolo s.r.l., while failing to specify what  
trademark or trade name rights it had to give [written argument paras 14-16, 49, 54, 71]. The  
Applicant further submitted at the oral hearing that the wording of Ms. Galperti’s affidavit  
suggests F.lli Galperti s.r.l. may have continued to exist after 2000, such that more than one  
entity may at that time have been using the Opponent’s Mark and Opponent’s Logo.  
[65] However, I find the evidence does not support the Applicant’s suggestion that F.lli  
Galperti, F.lli Galperti s.r.l., Officine F.lli Galperti s.r.l., and/or F.lli Galperti fu Paolo s.r.l. are  
separate entities. Ms. Galperti states in her affidavit that the Opponent’s business was purchased  
on June 21, 2000 from F.lli Galperti fu Paolo s.r.l.which she explains is commonly referred to  
in some of the documentation and invoices attached to her affidavit as “F.lli Galperti s.r.l.”—and  
that the purchase included all rights, titles and interests in and to the GALPERTI trademarks and  
trade names and the goodwill associated therewith [para 6]. Further, contrary to the Applicant’s  
submissions, Ms. Galperti did not state under cross-examination that Italian law requires a  
company’s full legal business name to be shown on invoices; she merely stated that showing a  
trademark without the legal business name is prohibited [Q191-192]. Indeed, she subsequently  
added that “fu Paolo” was “a non-essential element for objectives of the legal name” and that no  
objection has ever been raised regarding the “abbreviated legal business name” [Q199-206].  
[66] Furthermore, I find no evidence that F.lli Galperti s.r.l. continued as an active company,  
using the Opponent’s Mark or Opponent’s Logo, after 2000. In this respect, I do not interpret  
Ms. Galperti’s descriptions of her positions to imply that she was president of F.lli Galperti s.r.l.  
from 2000 to 2003, i.e. continuing in that role after the acquisition of this business by the  
Opponent. Although she states that she was president of F.lli Galperti s.r.l. before becoming  
president of Opponent; she does not state that it was immediately before. Also, while she did  
answer “correct” when asked, under cross-examination, whether she had stated in her affidavit  
that she was president of F.lli Galperti s.r.l. from 1996 to 2003 [Q37], she subsequently clarified  
20  
that her position from 2000 to 2003 was that of managing director of the Opponent (sometimes  
translated by the interpreter as “general director”), with the role of president of the Opponent  
being added in 2003 [Q48-53]. Further, she specified that she assumed the role of managing  
director of the Opponent after its acquisition of all the activities of F.lli Galperti s.r.l. [Q52].  
[67] In view of the foregoing, I am satisfied that the Opponent has established use of the  
Opponent’s Mark and Opponent’s Logo—first by its predecessor it title and then by itselfsince  
at least as early as 1991, which is earlier than the material date.  
[68] With respect to non-abandonment at the date of advertisement, November 5, 2014,  
Ms. Galperti states that “[d]ue to poor market conditions since 2014, the opponent has  
experienced some hardship regarding sales of its GALPERTI products in Canada” [para 17], and  
indeed the last invoice attached to her affidavit is dated March 11, 2013 [Exhibit DG-7]. She was  
unable to confirm under cross-examination whether there were any sales in Canada in or after  
2014 [Q298-303]. However, she states that the Opponent’s Mark remains a critical component of  
the Opponent’s assets in Canada and that the Opponent has never abandoned nor has any  
intention to abandon the Opponent’s Mark and/or the company name in Canada [paras 17-18].  
Indeed, her evidence shows that in June 2014 and again in September 2014, the Opponent made  
an offer to sell flanges to an Alberta company using a form that, like the Opponent’s invoices,  
features an acceptable variation of the Opponent’s Logo in the upper right corner [para 18,  
Exhibit DG-8]. Furthermore, Ms. Galperti attests that the Opponent has been referring Canadian  
customers to its website featuring the Opponent’s Mark for information about its products  
[para 18, with printouts and screen captures showing an acceptable variation of the Opponent’s  
Logo displayed on the website at Exhibit DG-4].  
[69] I find the Opponent’s verbal confirmation of the intention to continue use of the  
Opponent’s Mark and Opponent’s Logo, supported by the exhibited offers to sell on the same  
“letterhead” as the post-2000 invoices, sufficient evidence that the Opponent did not abandon  
either trademark, despite nearly two years of non-use. Despite the Applicant’s submissions, I  
find it irrelevant whether the exhibited offers to sell were in response to inquiries from potential  
clients and I do not consider a detailed plan for resumption of use necessary to show that there  
was no intention to abandon. Contrary to the Applicant’s submissions, I do not equate  
21  
Ms. Galperti’s explanation under cross-examination that Canadian market conditions were poor  
in 2014 owing to low prices and profit margins [Q321-333] with an intention to abandon the  
Canadian market; I find it equally consistent with the Opponent attempting to remain in the  
market but at a higher price point.  
[70] Based on the foregoing, I am satisfied that the Opponent has met its initial burden to  
evidence use of the Opponent’s Mark and Opponent’s Logo prior to the date of first use claimed  
in the Application and that these trademarks were not abandoned at the date of advertisement of  
the Application. Accordingly, the onus is now on the Applicant to establish, on a balance of  
probabilities, that the Mark was not likely to cause confusion with the Opponent’s trademarks at  
that claimed date of first use.  
THE TEST FOR CONFUSION  
[71] The use of a trademark causes confusion with another trademark or trade name if the use  
of both in the same area would be likely to lead to the inference that the goods or services  
associated with the applicant’s trademark and those associated with the opponent’s trademark, or  
with the business carried on under the opponent’s trade name, are manufactured, sold, leased,  
hired or performed by the same person [section 6(2)-(4) of the Act]. Thus the test for confusion  
does not concern confusion of the trademarks and trade names themselves but rather confusion  
as to whether the goods and services associated with each party’s trademark or trade name come  
from the same source.  
[72] The test is to be applied as a matter of first impression in the mind of a casual consumer  
somewhat in a hurry, who sees the applicant’s trademark at a time when he or she has no more  
than an imperfect recollection of the opponent’s trademark or trade name and does not pause to  
give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and  
differences between the trademarks or between the trademark and trade name [Veuve Clicquot  
Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23]. Regard must be had to all the surrounding  
circumstances, including those set out in sections 6(5)(a) to (e) of the Act, but these criteria are  
not exhaustive and the weight given to each factor will vary in a context-specific analysis [Mattel  
USA Inc v 3894207 Canada Inc, 2006 SCC 22].  
22  
[73] Although the Opponent pleads confusion with both the Opponent’s Mark and the  
Opponent’s Logo, I find that the Opponent’s Mark represents the Opponent’s strongest case, so  
that comparing the Mark with the Opponent’s Mark will effectively decide the ground of  
opposition. I will therefore focus my discussion on the Opponent’s Mark.  
Section 6(5)(e): Degree of resemblance between the trademarks  
[74] The degree of resemblance between the trademarks at issue is often the factor likely to  
have the greatest effect on the confusion analysis and thus is an appropriate starting point  
[Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27]. In the present case, the Mark is  
identical to the Opponent’s Mark in appearance, sound, and ideas suggested. Although the  
evidence shows the Opponent’s Mark displayed in a particular font with a stylized initial G, the  
Application is for a word mark, so that its registration would permit use of the Mark in any style  
of lettering, color or design, including styles more similar to that of the Opponent. Accordingly,  
this factor favours the Opponent.  
Section 6(5)(a): Inherent distinctiveness of the trademarks and extent to which they  
have become known  
[75] Trademarks lacking in distinctiveness are only entitled to a narrow ambit of protection, in  
the sense that a greater degree of discrimination may fairly be expected from the public and  
relatively small differences between the trademarks may suffice to avert confusion [see GSW Ltd  
v Great West Steel Industries Ltd (1975), 22 CPR (2d) 154 (FCTD)].  
[76] In the present case, I find that both parties’ trademarks, despite being surnames, have at  
least some measure of inherent distinctiveness. Since there is no evidence of GALPERTI being a  
common or known surname in Canada, and no evidence of it corresponding to any defined word  
in English or French, I find it at least as likely that the average purchaser of the parties’ goods in  
Canada would perceive GALPERTI as an invented or foreign word used as a brand.  
[77] I find the level of inherent distinctiveness to be similar for both parties’ trademarks.  
However, distinctiveness can be enhanced through use and promotion, and both parties filed  
evidence in this respect.  
23  
Extent to which the Opponent’s Mark has become known  
[78] The Opponent’s evidence consists essentially of the evidence of use discussed above.  
However, the limited evidence of use prior to 1999 only permits me to conclude to the  
Opponent’s Mark becoming known to a limited extent prior to the material date.  
[79] Ms. Galperti states that the exhibited invoices discussed above are only a random  
selection and in no way exhaustive illustrations of all the sales made by the opponent in Canada  
since 1988” [para 14]. However, the only Canadian sales figures she provides are for flanges in  
the years 2005 to 2013, which is after the material date [para 15]. If Canadian sales under the  
Opponent’s Mark from 1991 to 1999 exceeded the totals in the exhibited invoices, then the  
extent by which they did so is not in evidence. In this respect, I would also note that, in 2007 and  
each year from 2009 to 2013, the annual sales total provided does not exceed the total of the  
amounts charged in the exhibited invoices for that year, as discussed in more detail below under  
the distinctiveness grounds of opposition. In the circumstances, based on the evidence provided,  
I am unable to conclude to any sales prior to 1999 beyond those shown in the exhibited invoices.  
[80] Moreover, it appears from the names of the invoice recipients during this time period that  
the sales may have been essentially to a single client. Although three different names are listed—  
Jarda Forgings & Castings Sales Ltd. (1991-1993), Jarda Group of Companies (1995), and Jarda  
Stainless Inc. (1997)they would all appear to be from the same group of companies in  
Mississauga. It is not clear whether the first and third names represent different companies  
within the Jarda Group of Companies or whether all three names represent a single company that  
has undergone name changes; nevertheless, the evidence is consistent with there being  
essentially a single client: the Jarda Group of Companies.  
[81] Ms. Galperti confirmed under cross-examination that the Jarda Group of Companies is a  
supplier [Q242]. However, in the absence of any information on the number and location of end  
users supplied and on how the goods were invoiced and packaged when shipped to the end users,  
it is not possible to draw any inferences as to the extent to which the Opponent’s Mark might  
also have become known to consumers of flange products in Canada.  
24  
[82] I note that Ms. Galperti also mentions the Opponent investing in worldwide advertising  
and promotion; however, she states that the level of expenditures pertaining to Canada is not  
available, and provides no information on the timing or extent of such advertising [para 16]. It is  
thus impossible to determine the extent to which promotion of the Opponent’s Mark may have  
contributed to it becoming known in Canada.  
Extent to which the Applicant’s Mark has become known  
[83] The Applicant’s evidence of use in Canada is necessarily after the material date.  
Moreover, although the Applicant provides some evidence of the Mark being promoted in  
Canada before the material date, this evidence is limited, and directed more towards the  
incorporation of the Mark into trade names than to use of the Mark as a trademark. In particular,  
Mr. Puccio states that the Applicant has advertised its products in association with the Mark  
since 1991 by means of promotional material and sponsorship of events such as golf tournaments  
held in Alberta [para 16]; however, he provides no information as to the extent to which any such  
promotional materials were distributed nor any information on the nature and extent of exposure  
to the Mark during any events.  
[84] For example, with respect to the nature of the promotional materials and how they were  
branded, Mr. Puccio provides only a representative sample brochure at Exhibit H [para 16]. The  
brochure lists what appear to be members or offices of the Galperti Group around the world and  
advertises what appear to be various Goods and related services. However, the dates listed for  
each member’s or office’s inception suggest that the brochure was issued in or after 2010, which  
is after the material date. Moreover, there is no information on the specific timing or extent to  
which similar brochures may have been distributed in Canada prior to the material date.  
[85] I would also note that the Mark as applied for is not displayed on the exhibited brochure.  
Instead, a variation of the GALPERTI GROUP Logofeaturing a stacked arrangement of a  
large G Logo, the words “GALPERTI GROUP” in the same size and style of lettering, and the  
phrase “The Original®in cursive lettering— is displayed on the brochure’s cover, along with  
the phrase “Since 1921 Your Best Partner In…” and domain name WWW.GALPERTI.COM.  
However, in the absence of any information as to whether similar brochures were delivered prior  
to the material date and, if so, how their branding may have differed, it is not necessary to  
25