In Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc., 2016 FCA 265, the Federal Court of Appeal allowed an opposition against the registration of a Pizzaiolo Restaurants Inc. trademark. The application was initially for registered trademarks in the word “PIZZAIOLO” and for a design incorporating the name:
The respondent, Les Restaurants La Pizzaiolle Inc., opposed the marks. The Trade-marks Opposition Board allowed the opposition against the word mark, but not the design. The design mark opposition was appealed to the Federal Court, which held that the Board erred and thus rejected the trademark registration. Pizzaiolo appealed to the Federal Court of Appeal.
There were two grounds of opposition to the design mark: (i) it was not registrable pursuant to section 16(1)(a) of the Trademarks Act because on the date of first use by the appellant, the mark was confusing with trademarks previously used or made known in Canada; and (ii) it was not registrable pursuant to section 12(1)(d) of the Act because it was confusing with the word mark “La Pizzaiolle”.
With respect to the first, the Board found that the respondent had not used the word “Pizzaiolle” in isolation, but rather always in the following graphic forms:
However, the Board held that “the Applicant has satisfied its legal onus with respect to the PIZZAIOLO & Design mark owing to the more pronounced differences existing between this design mark and the Opponent’s LA PIZZAIOLLE word mark or its variant PIZZAIOLLE as depicted in the PIZZAIOLLE Design Nos. 1, 2 and 3.” The Court of Appeal held that this decision was within the range of acceptable and defensible outcomes.
Unlike the first ground of opposition, the confusion analysis under section 12(1) is not limited to how the respondent’s mark had been used since registration. However, there was no indication that the Board considered this distinction. The Board disposed of the second ground of opposition in a single paragraph for essentially the same reason as it did for 16(1)(a).
The Court found that using the word “Pizzaiolle” in an oval or simply on an oval sign would also qualify as use of the registered mark. Thus, the registration of the respondent’s mark “LA PIZZAIOLLE” entitled it to use lettering and colours identical to the ones used by the appellant. Indeed, the respondent had been using the word “Pizzaiolle” in an oval sign:
Once one considers 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), there are no more differences than when comparing the two word marks in respect of which the Board concluded to the likelihood of confusion. The addition of the words “Gourmet Pizza” did not save the application. The Court held that those words are clearly descriptive and it was almost impossible to conclude that a consumer would be able to distinguish between the two sources of the wares or services because of those words. Moreover, the appellant could not be given the exclusive right to use descriptive words such as “Gourmet Pizza” since paragraph 12(1)(b) of the Act precludes the registration of words that are clearly descriptive of the character and quality of the wares or services.
The court of Appeal thus held that the Board erred by failing to consider the full scope of the rights conferred by the registration of the respondent’s mark. The Board could only reasonably have reached the same conclusion with respect to the design mark that it reached in respect of the word mark. Its decision to dismiss the opposition in respect of the design mark was not within the range of acceptable and defensible outcomes.
A copy of the Court of Appeal’s judgment can be found here.