A recent decision of the Federal Court has given very little weight to the use of a design element consisting of an oval shaded background for a trademark.
Facts
The applicant filed two trademark applications based on use in association with, among other things, gourmet pizza and restaurant services. The first application related to the word PIZZAIOLO. The second application related to the design shown below.
The Opposition
The opponent opposed both of the applications on the basis that the applied-for marks were confusing with its registered trademark LA PIZZAIOLLE (or the variant PIZZAIOLLE), which had been used by the opponent in Canada prior to the applicant’s claimed date of first use. The specific grounds of opposition alleged that the applied-for marks were not registrable, not distinctive and that the applicant was not the person entitled to registration.
The Trademarks Opposition Board Decision
The hearing officer allowed the opposition and refused the application for the word mark in its entirety. However, with respect to the PIZZAIOLO DESIGN application, the opposition was refused and the application allowed to proceed to registration. The hearing officer determined that the applicant had satisfied its onus to show the mark should be registered “owing to the pronounced differences” between the design mark and the opponent’s registered trademark.
The Appeal
The opponent appealed to the Federal Court from the portion of the hearing officer’s decision that rejected its opposition to the application for the design mark.
The Standard of Review
Both parties filed additional evidence and argued that because their evidence was material the appeal should proceed on a de novo basis and that the standard of correctness should be applied to the matters in issue.
The judge did not accept these arguments and said that in order to intervene he needed to be convinced that the hearing officer’s decision was clearly wrong or in other words that the decision fell outside the range of possible acceptable outcomes that were defensible in respect to the facts and law.
Confusion
The judge said that the determination of whether two marks are confusing must be considered from the point of view of the average consumer. In particular, the determination must be made on the basis of a first impression in the mind of a casual consumer somewhat in a hurry, who had no more than an imperfect impression of the mark that had been registered and did not pause to give the matter any detailed consideration, scrutiny, or to examine closely the similarity or difference of the marks. The application of this test requires an overall examination of the marks in issue, without close scrutiny or a side by side comparison.
The judge confirmed that in an opposition the onus was on the applicant to establish, on a balance of probabilities, that there was no likelihood of confusion with a previously used and registered trademark.
The judge referred to the well-known Masterpiece decision of the Supreme Court of Canada. In particular he emphasized, that when an opponent relies on a registered word mark, the assessment of confusion must give consideration to not only the current form of use of the registered trademark but also the likelihood of confusion arising from the use of the mark that is permitted by the registration. The current use of a registered word mark does not limit the rights of its owner because the registration grants the owner of a word mark the right to use the words that constitute the mark in any size and with any style of lettering, colouring or design.
Applying this principle, the judge determined that the Registrar ought to have recognized that the opponent was authorized, based on the rights granted to it from the registration of its word mark LA PIZZAIOLLE, to use the words LA PIZZAIOLLE or PIZZAIOLLE “in any size, and with any style of lettering, colour or design”, and, therefore, to depict these words in a manner identical to or very similar to that of the PIZZAIOLO Design mark with the same style and colour of lettering as well as the same background colour.
The judge said that the applicant’s design mark was made up of the word PIZZAIOLO written on a green oval background, accompanied by the words “GOURMET PIZZA”. These words were in no way striking or unique and of a generic nature. The word PIZZAIOLO was the dominant element of the design mark.
As a result of the hearing officer’s failure to carry out such an analysis the judge concluded that the hearing officer had committed an error which affected the reasonableness of his decision and the appeal was allowed.
Comment
This decision is surprising since it appears that the hearing officer and the judge did not disagree on the application of the relevant principles but on the impact of the circular design element and the words “gourmet pizza”. This appears to be more of a matter of fact rather than a matter of law or an error in principle. If this is correct deference should have been given to the decision of the hearing officer as it was not outside the range of possible acceptable outcomes.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.