• Court of Appeal Finds Mark Confusing with Opponent's Design Mark, Where both Marks Considered in the Same Context Have No More Differences than Comparing Two Word Marks
  • November 28, 2016 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc., 2016 FCA 265

    This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design (see 2015 FC 240, our summary here). On appeal, the only question was whether the Federal Court properly applied the reasonableness standard to determine that the Board had erred in reaching its conclusion that the opposition should be rejected.

    In dismissing the appeal, the Court of Appeal agreed with the Federal Court that the Board's analysis of the opposition based on paragraph 12(1)(d) of the Trade-marks Act was lacking in that the Board had failed to consider the full scope of the protection afforded by the registration of the respondent's mark.

    The Board acknowledged that the scope of protection of the registered mark included the use of the word "Pizzaiolle" alone, and the respondent's use of the three designs reproduced in paragraph 7. On this basis, the Court of Appeal found that "it is most likely that using the word "Pizzaiolle" in an oval or simply on an oval sign would also qualify as use of the registered mark" since the word remains the dominant feature of the Design Mark.

    As mandated by the Supreme Court in Masterpiece, the Court of Appeal considered the two marks in the same context (i.e. the words "Pizzaiolle" and "Pizzaiolo" in square lettering in a lighter shade on a dark oval), and concluded that there were no more differences than when comparing the two word marks, in respect of which the Board had already concluded that there would be a likelihood of confusion. Thus, the Board's decision to dismiss the opposition in respect of the Design Mark was not within the range of acceptable and defensible outcomes.

    Lastly, the Court of Appeal cautioned that one should be careful not to give the principle set out in Masterpiece too great a scope as there would no longer be any need to register a design mark when one has a word mark. The Court of Appeal noted that its conclusion was entirely based on the facts of this case and the Board's findings as to what would constitute proper use of the registered mark.