TheImpact of a Design in a Trademark Dispute Revisited
Inour newsletter article of March 2015 we discussed a decisionof the Federal Court which had given little weight to the use of a designelement consisting of an oval shaded background of a trademark. http://www.gsnh.com/the-impact-of-a-design-in-a-trademark-dispute/. An appeal from this decision has beendismissed.
Facts
The applicant filed two trademarkapplications based on use in association with, among other things, gourmetpizza and restaurant services. The firstapplication related to the word PIZZAIOLO. The second application related to the design shown below.
The Opposition
The opponent opposed both of theapplications on the basis that the applied-for marks were confusing with itsregistered trademark LA PIZZAIOLLE (or the variant PIZZAIOLLE), which had beenused by the opponent in Canada prior to the applicant’s claimed date of firstuse. The specific grounds of oppositionalleged that the applied-for marks were not registrable, not distinctive andthat the applicant was not the person entitled to registration.
The Trademarks Opposition Board Decision
The hearing officer allowed theopposition and refused the application for the word mark in its entirety. However, with respect to the PIZZAIOLO DESIGNapplication, the opposition was refused and the application allowed to proceedto registration. The hearing officerdetermined that the applicant had satisfied its onus to show the mark should beregistered “owing to the pronounced differences” between the design mark andthe opponent’s registered trademark.
The Federal Court Decision
Theprimary issue before the court involved the determination of whether the twotrademarks were confusing. The judgeconcluded that this determination must be considered from the point of view ofan average consumer.
Inparticular, the determination must be made on the basis of a first impressionin the mind of a casual consumer somewhat in a hurry, who had no more than animperfect impression of the mark that had been registered and did not pause togive the matter any detailed consideration, scrutiny, or to examine closely thesimilarities or the differences between the marks. The application of this test requires anoverall examination of the marks in issue, without close scrutiny or a side byside comparison.
Thejudge referred to the well-known Masterpiece decision of the SupremeCourt of Canada. In particular heemphasized that when an opponent relies on a registered word mark, theassessment of confusion must give consideration to not only the current form ofuse of the registered trademark but also the likelihood of confusion arisingfrom the use of the mark that is permitted by the registration. The current use of a registered word markdoes not limit the rights of its owner because the registration grants theowner of a word mark the right to use the words that constitute the mark in anysize and with any style of lettering, colouring or design.
Applyingthis principle, the judge determined that the hearing officer ought to haverecognized that the opponent was authorized, based on the rights granted to itfrom the registration of its word mark LA PIZZAIOLLE, to use the words LAPIZZAIOLLE or PIZZAIOLLE “in any size, and with any style of lettering, colouror design”, and, therefore, to depict these words in a manner identical to orvery similar to that of the PIZZAIOLO Design mark with the same style andcolour of lettering as well as the same background colour.
Thejudge said that the applicant’s design mark was made up of the word PIZZAIOLOwritten on a green oval background, accompanied by the words “GOURMETPIZZA”. These words were in no waystriking or unique and of a generic nature. The word PIZZAIOLO was the dominant element of the design mark.
Asa result of the hearing officer’s failure to carry out such an analysis thejudge concluded that the hearing officer had committed an error which affectedthe reasonableness of his decision and the appeal was allowed.
The Federal Court ofAppeal
Theonly issue before the appeal court was whether the judge of the Federal Courthad properly applied the reasonableness standard that applies to decisions madeby the hearing officer. In order toapply this standard the court was required to focus on the hearing officer’sdecision.
Applyingthis approach the court concluded that there was nothing inherently distinctivein the use of an oval design as the background for the applied-for mark. The word PIZZAIOLO continued to be thedominant feature of the design mark. Asa result, when one considered the two marks in the same context as was mandatedby Masterpiece there were no moredifferences than when comparing the two word marks concerning which the hearingofficer had concluded that there was a likelihood of confusion.
The court observed that the registration of the PIZZAIOLO DESIGN application would providesome flexibility as to how the applicant could use it; however, theregistration of a specific design limits the graphic variant that wouldconstitute use by the applicant of its registered mark pursuant to section 4 ofthe Act. The deviations from the registered design must not change thedistinctiveness of the mark; it must retain its dominant features.
Inlight of this finding, the court concluded that but for the error of law madeby the hearing officer (the failure to consider the full scope of the rightsconfirmed by the registration of the opponent’s mark), the officer could onlyreach the same conclusion with respect to the design mark as was reached withrespect to the word mark. The decisionto dismiss the opposition concerning a design mark was not within the range ofacceptable and defensible outcomes and the Federal Court had properly appliedthe reasonableness standard of review. As a result, the appeal was dismissed.
Beforeconcluding its decision the court said that one should be careful not to givethe principle set out in the Masterpiece casepreviously referred to, too great a scope, for there would no longer be anyneed to register a design mark when one has a word mark. The current decision was entirely based onthe facts of the case and the officer’s finding as to what would constitute aproper use of the registered trademark. When comparing marks one is always limited to “use that is within thescope of the registration”.
Thecourt has previously said that cautious variations of a registered mark can bemade without adverse consequences if the same dominant features are maintainedand the differences are so unimportant that an unaware purchaser of the goodswould not be misled. This principle provides guidance as to what graphic orother deviations from a mark as registered are acceptable.
Comment
Hopefullythis decision will prevent the overly broad application of the principle that onan assessment of confusion consideration must be given to not only the currentform of use of the registered trademark but also the likelihood of confusionarising from the use of the mark that is permitted by the registration. In this regard, the permitted versions of themark will be restricted to the versions that maintain the same dominantfeatures as the mark and the differences must be so unimportant that an unawarepurchaser would not be misled.
John McKeown
Goldman SloanNash & Haber LLP
480University 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 legaladvice as individual situations will differ and should be discussed with alawyer.
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