As a result of two decisions released a month apart by the Canadian Federal Court of Appeal, trademark owners now have significant insight with respect to the issue of the likelihood of confusion between a registered word mark and a pending design mark, and the importance of owning a word mark trademark registration when facing a conflicting trademark.
The two cases are Pizzaiola Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. 2016 FCA 265 and Domaines Pinnacle Inc. v. Constellation Brands et al. 2016 FCA 302 .
In the PIZZAIOLA case, the applicant filed two trademark applications, one for the word mark PIZZAIOLO, and the other for the design mark shown below:
The opponent filed an opposition based on confusion with its registered trademark LA PIZZAIOLLE, which had been used by the opponent in Canada prior to the applicant’s claimed date of first use. The Trademarks Opposition Board allowed the opposition and refused the application for the word mark in its entirety. However, the opposition was refused with respect to the design mark application. On appeal, the Federal Court held that the Board should have recognized that the opponent was authorized by virtue of its trademark registration to use the words LA PIZZAIOLLE in any size and with any style of lettering, color or design, and therefore could have depicted the words in a manner identical to or very similar to that of the PIZZAIOLO design mark with the same style and color of lettering as well as the same background color. Since it was clear that the word PIZZAIOLO was the dominant element of the design mark, it was ruled that there was no question that the marks would have been confusing.
The Court concluded that the Opposition Board had failed to consider all the ways in which the opponent could have used its registered trademark, even though it had not used any of these possible designs previously. Accordingly, this case illustrates the power of a word mark registration when dealing with competing applications. The Court of Appeal agreed with the Federal Court that the Board's analysis of the opposition was lacking in that the Board had failed to consider the full scope of protection afforded by the registration of the trademark.
The second case, which was delivered a month later, provides some limitations to the conclusions reached in the PIZZAIOLO case. In this case, the Federal Court of Appeal restored a decision of the Trademark Opposition Board, which had held that an application for a word and design mark for the trademark DOMAINE PINNACLE was unlikely to cause confusion with the registered trademark PINNACLES.
The Federal Court had originally adopted the approach taken by the Court in the PIZZAIOLO case and held that the Opposition Board had erred in not considering the potential uses that the opponent might have made of its registered trademark. However, a distinction was drawn by the Federal Court of Appeal in that the full scope of the rights granted for the registered trademark PINNACLES would not have permitted the opponent to use the distinctive graphic elements, namely an apple and snowflake design, that the Opposition Board had identified as being central to the distinctiveness of the applicant's trademark. The Federal Court of Appeal in the PINNACLE case further noted that it was not the task of the Board to consider all potential and unidentified uses of a registered word mark. The Court of Appeal also noted that the term PINNACLE was a commonly used term with little distinctiveness.
Both of these decisions by the Federal Court of Appeal therefore dealt with the extent to which the Opposition Board is required to consider possible uses of a registered trademark in determining the issue of confusion with a trademark application for a design trademark, with different results in each. It is noted that an application for leave to appeal in the Domaines Pinnacle case was filed with the Supreme Court of Canada on January 27, 2017. Accordingly, further developments with respect to this critical issue may still be forthcoming.