Docket: T-1605-13
Citation:
2015 FC 240
Ottawa, Ontario, February 24, 2015
PRESENT: The Honourable Mr. Justice LeBlanc
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BETWEEN:
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LES RESTAURANTS LA PIZZAIOLLE INC.
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Applicant
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and
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PIZZAIOLO RESTAURANTS INC.
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Respondent
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JUDGMENT AND REASONS
[1]
The applicant has filed an appeal under section
56 of the Trade-marks Act, RSC (1985), c T-13 (the Act), of a
decision of the Registrar of Trade-marks (the Registrar) dated July 4,
2013, that upheld only in part its objection to two applications for
registration filed by the respondent for the trade-marks PIZZAIOLO and Design
and PIZZAIOLO.
[2]
The appeal is allowed for the following reasons.
I.
Background
[3]
Both parties are in the restaurant business. Since
the early 1980s, the applicant has operated several pizzerias in the Montréal
region, under the trade-name LA PIZZAIOLLE (or the variant PIZZAIOLLE) while
the respondent has been doing the same thing in the Toronto region, under the
trade-name PIZZAIOLO, since the early 2000s.
A.
The respondent’s applications for registration
[4]
On October 24, 2008, the respondent filed with
the Registrar, under the numbers 1,416,446 and 1,416,447 respectively, two
applications to register the trade-marks PIZZAIOLO and Design (the Graphic
Mark) and PIZZAIOLO (the Word Mark). The Graphic Mark looks like this:
[5]
Each application was based on an allegation of
use of the marks that are the subject of the respondent’s two applications
since November 13, 2000 (claimed date of first use) for the following wares and
services:
Wares: (1) Gourmet
pizzas; calzone, namely garlic bread and bruschetta; chicken wings; salads;
non-alcoholic beverages, namely soft drinks, vegetable and fruit juices, coffee
and bottled water. (2) Merchandise used in the operation of restaurants,
namely menus, posters, pizza boxes and paper napkins.
Services: (1)
Take-out and sit-down restaurant; delivery services, namely delivery of
prepared food; online food ordering services; catering services; franchising
services, namely rendering technical assistance in the establishment and
operation of restaurants.
B.
The applicant’s objection
[6]
On January 6, 2010, the applicant filed with the
Registrar, in accordance with section 38 of the Act, a statement of opposition
for each of the respondent’s applications based on paragraphs 38(2)(a)
to 38(2)(d) of the Act. In particular, the applicant alleged that the
Graphic Mark PIZZAIOLO and the Word Mark PIZZAIOLO (collectively the Marks)
were confusing with its registered word trade-mark, LA PIZZAIOLLE (or the
variant PIZZAIOLLE), which was used in Canada prior to the claimed date of
first use, and consequently:
- The Marks are
not registrable under paragraph 12(1)(d) of the Act (s 38(2)(b));
- They are not
distinctive, contrary to the requirements of section 2 of the Act
(s 38(2)(d)); and
- The respondent
is not the person entitled to registration of the Marks under subsection
16(1) of the Act (s 38(2)(c)).
[7]
The applicant also alleged that the respondent’s
applications did not comply with section 30 of the Act (s 38(2)(a)),
in particular because the Marks had not been used since the claimed date of
first use in association with each of the wares and services described in the
applications.
[8]
The respondent denied each of the grounds of
opposition in a counter statement filed on May 12, 2010, in accordance
with subsection 38(6) of the Act.
[9]
Each party filed with the Registrar evidence by
affidavit; the applicant filed an affidavit from its president and secretary,
Daniel Noiseux, and the respondent filed an affidavit from Luigi Petrella, its
main representative and one from a trade-mark searcher employed by the law firm
representing the respondent. Only Mr. Noiseux was cross-examined.
C.
The Registrar’s decision
[10]
In a decision dated July 4, 2013, the Registrar,
per Annie Robitaille, member of the Trade‑marks Opposition Board and
Registrar’s delegate within the meaning of subsection 63(3) of the Act, allowed
in its entirety the applicant’s opposition to registration of the Word Mark
PIZZAIOLO (application 1,416,417).
[11]
As for the application regarding the Graphic
Mark PIZZAIOLO (application 1,416,416), the Registrar allowed the applicant’s
opposition only in part, determining that the Graphic Mark was not confusing
with the Word Mark filed by the applicant, LA PIZZAIOLLE, but that it could be
used only with certain wares and services described in the relevant
application.
[12]
In rendering his decision, the Registrar first
identified the two determinative issues that he thought necessary to resolve,
the first was to determine whether, given the combined effect of paragraphs
38(2)(a) and 30(b) of the Act, the respondent had used the Marks
in association with each of the wares and services described in the
applications since the claimed date of first use; the second involved
determining, given the combined effect of paragraphs 38(2)(b) to (d),
of section 2 and paragraphs 12(1)(d) and 16(1)(a) of the Act,
whether there is a likelihood of confusion between the Marks and the word
trade-mark LA PIZZAIOLLE (or its variant PIZZAIOLLE) as used and registered by
the applicant.
[13]
He then described the burden of proof on the
parties; the applicant having the burden to adduce sufficient admissible
evidence from which it could reasonably be concluded that the facts alleged to
support each ground of opposition exist and the respondent having the burden to
establish on a balance of probabilities that each of its applications complies
with the requirements of the Act.
(1)
The issue of the use of the wares and services
at the claimed date of first use
[14]
For the first issue, the Registrar, after
reviewing the evidence submitted by the respondent, determined that it had not
succeeded in proving continuous use, between the claimed date of first use and
the date its applications were filed, of the Graphic Mark and the Word Mark in
association with the wares and services covered by the applications, except
with respect to the following wares and services:
Wares: Gourmet
pizza;
Services: Take-out
and sit-down restaurant; delivery services, namely delivery of prepared food.
[15]
To the extent that it involved those wares and
services, the Registrar rejected this ground of opposition to both
applications.
(2)
The issue of the likelihood of confusion
[16]
For the second issue, the Registrar, determining
that the test for confusion was the same for each of the grounds of opposition
pleaded by the applicant, whether based on non‑registrability (s 12(1)),
non-entitlement (s 16(1)) or non-distinctiveness (s 2), found that the use of
the Word Mark PIZZAIOLO created a likelihood of confusion with the Word Mark
LA PIZZAIOLLE (or its variant PIZZAIOLLE) as used and registered by the
applicant. However, he determined that this did not apply to the use of the
Graphic Mark PIZZAIOLO.
[17]
The Registrar first reviewed the ground of
opposition based on paragraph 16(1)(a) of the Act, by which the
respondent is not the person entitled to register the Graphic Mark or the Word
Mark on the ground that on the claimed date of first use, each of the two Marks
created confusion with the word mark LA PIZZAIOLLE that the applicant was
already using in Canada in association with its restaurant services.
[18]
In doing so, he first recalled the test
applicable to likelihood of confusion, one of first impression and imperfect
recollection of the average consumer. He also recalled that to determine,
using this test, whether there is a likelihood of confusion between two
competing marks, he must have regard to all of the surrounding circumstances,
including those listed at subsection 6(5) of the Act, namely:
- The inherent
distinctiveness of the trade-marks at issue and the extent to which they
have become known;
- The length of
time the marks have been in use;
- The nature of
the wares, services and businesses associated with the marks;
- The nature of
the trade; and
- The degree of
resemblance between the trade-marks at issue in appearance or sound or in
the ideas suggested by them.
[19]
In his review of the factors set out in
subsection 6(5) of the Act, the Registrar made the following observations:
- The trade-marks
at issue are highly suggestive of a pizzeria and consequently possess a
low degree of inherent distinctiveness, which does not favour either
party; however, at the claimed date of first use, the registered word mark
LA PIZZAIOLLE (or its variant PIZZAIOLLE) was already well known in the
Montréal region, which weighs in favour of the applicant, as does the
length of time that mark has been in use in comparison to the Graphic Mark
and the Word Mark that are subject to the respondent’s applications;
- However, since
the wares, services and business of the parties overlap, the factors set
out in paragraphs 6(5)(c) and (d) do not favour either
party;
- Despite a
certain degree or resemblance between the marks at issue, when considered
in their totality, they look and sound somewhat different as seen in the
fact that the suffix IOLO, of the word mark PIZZAIOLO, can be pronounced
in three syllables, whereas the suffix IOLLE, of the registered mark LA
PIZZAIOLLE, can be pronounced in two syllables; moreover, the ideas
suggested by the marks, although each one suggests a pizzeria, also differ
somewhat in that the Graphic Mark and the Word Mark PIZZAIOLO evoke a
masculine noun whereas the registered mark LA PIZZAIOLLE (or its variant
PIZZAIOLLE) evokes a feminine noun;
- These
differences are even more pronounced when the Graphic Mark PIZZAIOLO is
considered, as it includes the expression “GOURMET
PIZZA” which further differentiates the Graphic Mark from the
applicant’s word mark LA PIZZAIOLLE (or its variant PIZZAIOLLE), owing to
its English grammatical construction.
[20]
The Registrar also weighed a number of other
factors deemed relevant to his analysis. First he determined that the
applicant’s use of the PIZZAIOLLE variant of its registered mark (LA
PIZZAIOLLE) in a special graphic form (below) was an a authorized use of that
mark, but that such a use further added to the distinctions existing between
that mark and the Graphic Mark PIZZAIOLO.
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(hereinafter
referred to as PIZZAIOLLE Design No 1)
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(hereinafter
referred to as PIZZAIOLLE Design No 2)
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(hereinafter
referred to as PIZZAIOLLE Design No 3)
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[21]
Second, he stated that the respondent’s existing
registration for the mark PIZZAIOLO “THEE” PIZZA
MAKER does not give it an automatic right to obtain any further registrations
no matter how closely related the original registration may be to the Marks
covered by the respondent’s applications.
[22]
He also was of the opinion that given the large
number of entries containing the word PIZZA in the Trade-marks Register, it can
reasonably be inferred that the word PIZZA had been commonly adopted in the
pizza and related restaurant services trade and found that it was only common
sense to accept that the word is commonly used in that trade.
[23]
Furthermore, the Registrar rejected, because it
was not relevant to an analysis under paragraph 16(1)(a) of the Act, the
factor related to the fact that the trade-marks at issue coexisted peacefully
in Canada for more than a decade since the material date to consider that
factor is the claimed date of first use, and not the date the applications were
filed. Moreover, he did not give any weight to the fact that the applicant did
not oppose or otherwise challenge the registration of the mark PIZZAIOLO “THEE” PIZZA MAKER on the grounds that the applicant’s
reasons for acting this way would be based on pure speculation and, in any
event, this fact also postdates the material date, namely the claimed date of
first use.
[24]
Based on the analysis of all these factors, the
Registrar found that a consumer who has an imperfect recollection of the word
mark LA PIZZAIOLLE (or its variant PIZZAIOLLE), as registered and used for the
applicant’s restaurant services, would, as a matter of first impression and
imperfect recollection of the mark LA PIZZAIOLLE, be likely to conclude that
the wares and services covered by the respondent’s applications, are, with
respect to the Word Mark PIZZAIOLO, produced, sold, performed or otherwise
authorized by the applicant.
[25]
Relying in particular on the decision of the
Supreme Court of Canada in Masterpiece v Alavida Lifestyles
Inc, [2011] 2 S.C.R. 387 (Masterpiece), he explained this finding as
follows:
(84) …. While I acknowledge the fact that
the marks in issue are not identical, I find that the differences existing
between them are not sufficient to outweigh the overall consideration of the
section 6(5) factors discussed above. Contrary to the situation prevailing
with the [respondent’s] applied for mark PIZZAIOLO & Design, registration
of the word mark PIZZAIOLO would permit the use of the mark in any size and
with any style of lettering, colour or design. As reminded in Masterpiece,
supra, at para 59, “a subsequent use that is within the scope
of the registration, and is the same or very similar to an existing mark will
show how that registered mark may be used in a way that is confusing with an
existing mark”.
[26]
Regarding the Graphic Mark PIZZAIOLO, he
determined that the respondent had satisfied its legal onus “owing to the more pronounced differences” between
said Graphic Mark and the registered word mark LA PIZZAIOLLE (or its variant
PIZZAIOLLE), as used in the graphic forms reproduced at paragraph 20 of this
judgment.
[27]
The Registrar allowed the applicant’s
non-entitlement ground of opposition pursuant to paragraph 16(1)(a) of
the Act with respect to the registration of the Word Mark PIZZAIOLO
(application 1,416,447) but rejected it with respect to the registration of the
Graphic Mark PIZZAIOLO (application 1,416,446).
[28]
The Registrar then addressed, although more
succinctly, the other grounds of opposition raised by the applicant concerning
the issue of confusion, namely non-registrability based on paragraph 12(1)(d)
of the Act, non-entitlement to registration based, this time, on paragraph
16(1)(c) of the Act and, last, non-distinctiveness based on section 2 of
the Act.
[29]
Although he determined that, contrary to the
review of ground of opposition based on paragraph 16(1)a) of the Act,
all of the respondent’s evidence could be taken into consideration, and not
only that relevant to the claimed date of first use, the Registrar found that
despite more favourable evidence, the respondent did not succeed in satisfying
its burden of proving that there is no reasonable likelihood of confusion
between the Word Mark PIZZAIOLO and the applicant’s registered word mark LA
PIZZAIOLLE (or its variant PIZZAIOLLE). Thus, he allowed the
non-registrability ground of opposition based on paragraph 12(1)(d) of
the Act with respect to the Word Mark PIZZAIOLO.
[30]
However, with respect to the Graphic Mark
PIZZAIOLO, the Registrar remained of the view that the respondent satisfied its
burden owing to the more pronounced differences between the Graphic Mark and
the registered word mark LA PIZZAIOLLE. Consequently, he rejected this ground
of opposition with respect to the Graphic Mark.
[31]
As for the ground of opposition based on
paragraph 16(1)(c) of the Act stating that, at the claimed date of first
use, each of the applied-for Marks was confusing with the applicant’s trade‑names
(LES RESTAURANTS LA PIZZAIOLLE; PIZZAIOLLE; RESTAURANT PIZZAIOLLE; RESTAURANT “LA PIZZAIOLLE” RESTAURANTS PIZZAIOLLE; LES
RESTAURANTS LA PIZZAIOLLE INC; and RESTAURANTS LA PIZZAIOLLE), the Registrar
rejected it because the applicant could not achieve a more favourable result
with its trade‑names than with its registered trade-mark with respect to
the review of the ground of opposition based on paragraph 16(1)(a) of
the Act.
[32]
Thus, he allowed this ground of opposition but,
once again, only for the application concerning the Word Mark PIZZAIOLO.
[33]
The Registrar came to the same conclusion
regarding the ground of non-distinctiveness of the Marks covered by the
respondent’s applications: he allowed it only for the application concerning
the Word Mark PIZZAIOLO, determining that his findings under the non‑registrability
of the Marks applied to this ground of opposition even though the relevant
dates are not the same in both cases.
[34]
Last, the Registrar rejected several other
grounds of opposition raised by the applicant on the grounds that they were not
valid or that they were not properly pleaded. As the applicant did not
reiterate these grounds of opposition in support of its appeal, it is not
necessary to discuss them.
D.
The appeal brought by the applicant
[35]
This appeal applies to the portion of the
Registrar’s decision that found against the applicant, specifically the
rejection of its opposition to the registration application for the Graphic
Mark PIZZAIOLO (application 1,416,446). The portion of the Registrar’s
decision that allowed the applicant’s opposition to the registration
application for the Word Mark PIZZAIOLO (application 1,416,447) and the portion
that allowed the applicant’s opposition to the registration application for the
Graphic Mark PIZZAIOLO in association with the wares and services for which the
respondent could not prove use at the claimed date of first use are not
challenged.
[36]
In support of their respective positions on
appeal, both parties adduced additional evidence, as permitted under subsection
56(5) of the Act. The applicant’s evidence involved an additional affidavit of
its representative, Mr. Noiseux, in which he submitted a series of photographs,
taken during the day, showing the exterior of one of the applicant’s
establishments. That was supplemental evidence to the photographs taken at
night that were adduced before the Registrar.
[37]
The respondent filed, in the form of four
additional affidavits, evidence seeking to establish that the word PIZZA is
generally a component of trade-names and trade-marks found in the pizza trade
and related restaurant services.
II.
Issues
[38]
In my opinion, this appeal raises the following
two issues:
- What is the
standard of review applicable to the impugned portion of the Registrar’s
decision?
- Did the
Registrar err in rejecting the applicant’s opposition to the registration
of the Graphic Mark PIZZAIOLO?
III.
Analysis
A.
Applicable standard of review
[39]
The applicant contends that for each of its
grounds of opposition regarding the issue of confusion, the Registrar committed
errors of law, particularly in his interpretation of Masterpiece, above,
such that the applicable standard of review is that of correctness.
[40]
The respondent, however, contends that this
appeal raises questions of fact and law that are within the Registrar’s
expertise and consequently, in the absence of fresh evidence that, had it been
adduced before him, would have materially affected Registrar’s findings and the
exercise of his discretion, the applicable standard of review is
reasonableness. In other words, the respondent states, the Court can only
intervene if the Registrar’s decision is clearly wrong.
[41]
Recently, in Cyprus (Ministry of Commerce and
Industry) v Producteurs Laitiers du Canada, 2010 FC 719 [Producteurs
Laitiers du Canada], my colleague, Justice de Montigny, aptly summarized
the state of the law concerning this question:
[28] … Generally, questions of fact or law
that are within the Registrar’s expertise are reviewable against the
reasonableness standard; in other words, this Court will only intervene if the
Registrar’s decision is clearly wrong. However, it is different where
additional evidence is filed with the Court and the evidence is relevant
insofar as it fills a gap or remedies deficiencies identified by the Registrar.
In that case, the Court may come to its own conclusion and will apply the
standard of correctness. However, this will only occur where the fresh
evidence is substantial and adds to what has already been submitted; if the
fresh evidence is repetitive and does not enhance the probative value of the
evidence already adduced, the standard of reasonableness will continue to
apply. The following passage from the decision of Justice Marshall Rothstein
for the majority in Molson Breweries v John Labatt Ltd., [2000] 3
F.C. 145, (C.A.), at paragraph 51, summarizes the situation well:
Having regard to the Registrar’s
expertise, in the absence of additional evidence adduced in the Trial Division,
I am of the opinion that decisions of the Registrar, whether of fact, law or
discretion, within his area of expertise, are to be reviewed on the standard of
reasonableness simpliciter. However, where additional evidence is adduced in the Trial
Division that would have materially affected Registrar’s findings of fact and
the exercise of his discretion, the Trial Division judge must come to his or
her own conclusion as to the correctness of the Registrar’s decision.
See also: Christian Dior S.A. v.
Dion Neckwear Ltd., 2002 CAF 29, at para.8; Canadian Tire Corp. v.
Accessoires d’Autos Nordiques Inc., 2007 FCA 367, at paras. 29-30; Shell
Canada Ltd. v. P.T. Sari Incofood Corp., 2008 FCA 279, at paras. 27-29; Minolta-QMS,
Inc. v. Tsai and al., 2006 FC 1249, at paras. 25-27.
[See also: Proctor & Gamble
Inc v Colgate-Palmolive Canada Inc, 2010 FC 231 at paras 21-24.]
[42]
Each party argues that the fresh evidence
adduced by the other party is not substantial, does not add anything to the
evidence already adduced before the Registrar and could not have, in this case,
materially affected Registrar’s findings of fact and the exercise of his
discretion. However, they contend that only their own fresh evidence could have
had that effect, which could mean that I must proceed de novo and apply
the standard of correctness to the questions at issue.
[43]
The effect of fresh evidence filed in the record
is therefore neutral and does not exclude the rule that decisions of the Registrar
are, as the law currently stands, subject to a reasonableness standard of
review.
[44]
In addition, as Justice de Montigny noted in Producteurs
Laitiers du Canada, above, the case law has recognized that in certain situations,
in which the issue is a purely legal one and does not involve facts or the Registrar’s
expertise, the standard of correctness may apply, even in the absence of fresh
evidence (Producteurs Laitiers du Canada, at para 29).
[45]
However, this is not the case here, where the
issues raised, which all boil down to whether there exists a likelihood of confusion
between the graphic Mark PIZZAIOLO that the respondent seeks to register and
the applicant’s registered mark LA PIZZAIOLLE, clearly involve facts or the Registrar’s
expertise.
[46]
In order to intervene in this instance, I must
therefore be convinced that the Registrar’s decision, in respect of one or
several determinative aspects, is clearly wrong. In other words, I must be
convinced that the decision falls outside the range of possible, acceptable
outcomes which are defensible in respect of the facts and law (Dunsmuir v
New Brunswick, 2008 SCC 9 [Dunsmuir] at para 47).
B.
Did the Registrar err in dismissing the
applicant’s opposition to the registration of the Graphic Mark PIZZAIOLO?
(1)
Alleged errors made by the Registrar
[47]
The applicant contends that the Registrar
committed two determinative errors in dismissing its opposition to the
registration of the graphic Mark PIZZAIOLO. The first is to have disregarded
the principles set out in Masterpiece, above, in its analysis of the
likelihood of confusion between the Graphic Mark PIZZAIOLO and the registered
word mark LA PIZZAIOLLE, and to have failed to take into account the right
conferred upon the applicant by the registration of the mark LA PIZZAIOLLE, to
use that mark in any size and with any style of lettering, colour or design.
[48]
The second error attributed to the Registrar is
to have dwelled, in proceeding with an examination of the degree of resemblance
of the trade-marks at issue required by paragraph 6(5)(e) of the Act, on
irrelevant details, such as the number of syllables, the gender and language of
the marks at issue, as well as the presence of non-distinctive elements, in
this case the words “GOURMET PIZZA”. The
applicant is of the view that in so doing, the Registrar contravened the test
of assessing the likelihood of confusion, which is based on the first
impression of an ordinary consumer, be they Anglophone or Francophone, who has
an imperfect recollection of the earlier mark and who does not pause to give
the matter any detailed consideration or scrutiny, or to examine closely the
similarities and differences between the marks. This test, according to the
applicant, requires an overall examination of the marks in question, and not a
microscopic examination.
[49]
For the reasons that follow, I have concluded
that the Registrar clearly erred in failing to take into account, in his
analysis of the likelihood of confusion, the potential uses that the
registration of the registered word mark LA PIZZAIOLLE (or its variant
PIZZAIOLLE) confers upon the applicant. In so doing, he misapprehended the
scope of Masterpiece. In this regard, his decision to the effect that
there is no likelihood of confusion with the Graphic Mark PIZZAIOLO is flawed
to the point of placing itself, in my view, outside of the range of possible,
acceptable outcomes which are defensible in respect of the facts and law. In
these circumstances, it will not be necessary for me to make a determination on
second error attributed to the Registrar by the applicant.
(2)
Applicable principles
[50]
Canada’s trade-mark regime is designed
to meet two objectives that are useful to both consumers and businesses. First,
it provides consumers with a reliable indication of the expected source of the
wares or services they consume; as such it offers a guarantee of origin - a gauge
of quality – that the consumer comes to associate with a particular trade-mark.
Second, it serves to maintain a balance between free competition and fair
competition by building on principles of fairness in commercial activities and
thus allowing a merchant to distinguish its wares and services from those of
its competitors (Mattel, Inc v 3894207 Canada Inc, [2006] 1 S.C.R. 772, at
para 21; Masterpiece, above, at para 1).
[51]
In pursuing these objectives, section 19 of the
Act gives the owner of a registered trade-mark, unless it is shown to be
invalid, the exclusive right to the use throughout Canada of that trade-mark in
respect of those goods and services referred to therein
[52]
In order for this exclusive right to be
effective, there cannot be confusion between the trade-mark in question and another
trade-mark anywhere in Canada (Masterpiece, above, at paras 31 and 33). In
this regard the Act provides mechanisms for the protection of the effectiveness
of that right specifically through conditions under which trade-marks may be
registered (section 12) and limits to the right of any person to register a
trade-mark (section 16).
[53]
Subsection 6(2) of the Act defines the concept
of confusion between two trade-marks in the following manner:
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6(2) The use of a trade-mark causes confusion with another
trade-mark if the use of both trade-marks in the same area would be likely to
lead to the inference that the goods or services associated with those
trade-marks are manufactured, sold, leased, hired or performed by the same
person, whether or not the goods or services are of the same general class.
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6(2) L’emploi d’une marque de commerce crée de la confusion avec
une autre marque de commerce lorsque l’emploi des deux marques de commerce dans
la même région serait susceptible de faire conclure que les produits liés à
ces marques de commerce ont fabriqués, vendus, donnés à bail ou loués, ou que
les services liés à ces marques sont loués ou exécutés, par la même personne,
que ces produits ou ces services soient ou non de la même catégorie générale.
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[54]
As was correctly noted by the Registrar, the
courts have specified that this concept should be applied from the point of
view of the average consumer. As such, in order to determine whether there is
confusion between two trade-marks, one for which registration is sought and the
other already registered or previously in use, one must ask oneself whether, as
a first impression in the mind of a casual consumer somewhat in a hurry, the
sight of the mark for which registration is being sought is likely to give the impression,
at a time when he or she has no more than an imperfect impression of the mark
already registered and previously in use, and does not pause to give the matter
any detailed consideration or scrutiny, or to examine closely the similarities
and differences between the two marks, that the wares or services associated
with these marks were produced, sold or provided, as the case may be, by the
same person (Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, [2006] 1
SCR 824 [Veuve Clicquot Ponsardin] at para 20; Masterpiece,
above, at para 40; and Miss Universe, Inc v Bohna, [1995] 1 FC 614 (QL)
[Miss Universe] at paras 10-11).
[55]
This first impression test requires an overall
examination of the marks at issue; close scrutiny or side by side comparison of
the marks in question would therefore be anathema to this test (Veuve
Clicquot Ponsardin, above, at para 20; Masterpiece, above, at para
40).
[56]
Subsection 6(5) of the Act states that an
examination of the likelihood of confusion between two competing trade-marks
must “have regard to all of the surrounding
circumstances”, including the following factors:
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6(5) In determining whether trade-marks or trade-names are
confusing, the court or the Registrar, as the case may be, shall have regard
to all the surrounding circumstances including
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6(5) En décidant si des marques de commerce ou des noms
commerciaux créent de la confusion, le tribunal ou le registraire, selon le
cas, tient compte de toutes les circonstances de l’espèce, y compris :
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(a) the inherent distinctiveness of the trade-marks or
trade-names and the extent to which they have become known;
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a) le caractère distinctif inhérent
des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils
sont devenus connus;
|
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(b) the length of time the trade-marks or trade-names have
been in use;
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b) la période pendant laquelle les
marques de commerce ou noms commerciaux ont été en usage;
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(c) the nature of the goods, services or business;
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c) le genre de produits, services ou
entreprises;
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(d) the nature of the trade; and
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d) la nature du commerce;
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(e) the degree of resemblance between the trade-marks or
trade-names in appearance or sound or in the ideas suggested by them.
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e) le degré de ressemblance entre les
marques de commerce ou les noms commerciaux dans la présentation ou le son,
ou dans les idées qu’ils suggèrent.
|
[57]
Lastly, in the context of opposition to the
registration of a trade-mark and assuming that the opponent has met its burden,
it is up to the applicant for the registration to establish, on a balance of
probabilities, that there is no likelihood of confusion with a previously used
and registered trade-mark (Miss Universe, above, at para 11; John
Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293, [1990] FCJ No
533, aff’d (1992), 42 CPR (3d) 495; Cyprus (Ministry of Commerce and
Industry) v International Cheese Council of Canada, 2011 FCA 201, at paras
25-28, 93 CPR (4ed) 255, leave to appeal to the Supreme Court of Canada denied,
34430 (April 12, 2012). The burden in this case, as the Registrar correctly
noted, was on the respondent.
(3)
Scope of Masterpiece
[58]
The applicant in this case is seeking to protect
its right to the exclusive use of the word Mark LA PIZZAIOLLE resulting from
its registration of the said mark. The applicant submits that the respondent’s
use of the graphic Mark PIZZAIOLO threatens that monopoly because use of the
two marks in a same region would be likely, on the basis of the first
impression test, to create confusion as to the source of the wares and services
associated with both marks. It argues that Masterpiece, above, when
properly interpreted, in contrast to the Registrar’s interpretation, provides
such protection.
[59]
Masterpiece
turned out to be the occasion, for the Supreme Court of Canada, to examine “the basic approach” to be adopted with regard to
determining whether competing trade-marks, in that case, on one side, marks
that included the word “Masterpiece”, such as “Masterpiece the Art of Living” and “Masterpiece, the Art of Retirement Living”, and on
the other, the registered mark “Masterpiece Living”,
created confusion. As in this case, the parties in that proceeding were in the
same line of business in two different regions of Canada.
[60]
In examining this issue, the Supreme Court focused
on the factor of the resemblance between two competing marks, set out at
paragraph 6(5)(e) of the Act. In doing so, it noted that, and this is
what the applicant insisted upon, this factor should be assessed not only on
the basis of a competing registered mark’s current use but also on the basis of
the uses allowed by the registration (Masterpiece, above, at para 53).
[61]
This is what I retain from the Supreme Court’s
teachings on this issue:
- The trade-mark
on an application for registration may consist either of one word or a
group of words serving as a mark, or it may be a design, or it may be a
word or group of words accompanied by a design; the applicant may, but is
not obliged to, identify a colour as being characteristic of the mark for
which registration is being sought (Masterpiece, above at para 54);
- The expression “degree of resemblance” from paragraph 6(5)(e)
means that there may be a likelihood of confusion not only in the
appearance of similar competing marks but also among marks with some differences
(Masterpiece, above, at para 62);
- Given that the
registration of a trade-mark confers, under section 19 of the Act,
exclusive rights upon its owner, the issue is whether the trade-mark for
which registration is being sought creates confusion with a registered
word mark must be examined keeping in mind not only the current use of the
registered mark but also the likelihood of confusion arising from the use
of this mark which is nonetheless permitted by the registration; the
current use of registered word mark does not therefore limit the rights of
its owner because the registration of the mark grants the owner the right
to use the words that constitute the mark in any size and with any style
of lettering, colour or design; (Masterpiece, above, at paras
55-57; Mr. Submarine Ltd v Amandista Investment Ltd, [1988] 3 FC 91
(FCA), [1987] FCJ No 1123 (QL) at pages 102-103).
- Therefore, an
analysis of the likelihood of confusion that only takes into account
limited use of a registered word mark would be incorrect in law, as it
should not replace an examination of other potential uses within the
registration; thus, a subsequent use, that is within the scope of a
registration, of a registered word mark that is the same or very similar
to a competing mark, will show how that registered mark may be used in a
way that is confusing with an existing mark (Masterpiece, above, at
paras 58-59).
[62]
The applicant argues that the rights granted to
it by the registration of the word
mark LA PIZZAIOLLE authorize it to use that mark, under its variant PIZZAIOLLE,
by reproducing this word in the same size, style of lettering, colour and
design as the respondent’s Graphic Mark PIZZAIOLO.
[63]
The applicant notes in this regard that the Registrar
recognized and applied this principle in deciding to dismiss the application to
register the word mark PIZZAIOLO but that he failed to take into account in his
analysis the likelihood of confusion of the Graphic Mark. It is of the view
that had the Registrar considered this, as he ought to have in light of Masterpiece,
only one conclusion, consistent with the one already made with regard to the word
mark, would have presented itself: the likelihood of confusion should be
assessed on the basis of subsequent uses the applicant may make of its registered
word mark, including reproducing the word PIZZAIOLLE in a manner identical or
very similar to the Graphic Mark PIZZAIOLO, that is to say, with the same style
of lettering, the same oval design and the same GOURMET PIZZA description next
to it, thus creating, along with the word mark, a likelihood of confusion.
[64]
The respondent claims that the applicant gives Masterpiece
far too great a scope. It is of the view that when it ruled that an owner of a
registered word mark had the right to use the word or words “in any size and with any style of lettering, colour or
design” (Masterpiece, above, at para 55), the Supreme Court did
not go so far as to say that it allowed the owner to add words or graphic
elements to a registered mark. According to the respondent, the principle established
at paragraph 55 of Masterpiece applies only to the colour and to the
style of lettering of a trade-mark comprised solely of a word or words.
[65]
The interpretation of this passage from Masterpiece
favoured by the applicant, in particular the words “in
any size … or design”, would have the effect, according to the respondent,
of expanding the monopoly granted by the registration of a word trade-mark well
beyond what is provided for and permitted under the Act. Such an interpretation
would also have the effect, warns the respondent, to allow the owner of a
registered mark to successfully oppose the registration of a competing trade-mark
associated with similar wares and services but using distinctive graphic
elements, such as a tree or coat of arms, on the basis that the inclusion of
such elements would be part of possible subsequent uses of the registered mark.
(4)
Application of Masterpiece to the facts
of this case
[66]
In my opinion, Masterpiece required the Registrar
to take into account possible future uses of the mark LA PIZZAIOLLE (or its
variant PIZZAIOLLE), both with regard to Word Mark and that of the Graphic Mark,
that the respondent is seeking to register. In doing so, the Registrar ought
to have recognized that the applicant was authorized, based on the rights
granted to it from the registration of its word mark LA PIZZAIOLLE to
ultimately 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 an identical or very similar to that of the
Graphic Mark PIZZAIOLO, that is to say, with the same style and colour of
lettering as well as the same background colour as that Graphic Mark.
[67]
As the applicant pointed out, the Registrar
acknowledged that the use of the word PIZZAIOLLE, in the form of the three
distinct designs reproduced at paragraph 20 of these reasons, was an authorized
use of the registered mark LA PIZZAIOLLE, and concluded that this was a
contributing factor to the likelihood of confusion with the Word Mark
PIZZAIOLO. Moreover, the respondent does not claim that the Registrar erred in
arriving as that conclusion. I note in this regard that while one of the
designs consists only of the stylized writing of the word PIZZAIOLLE, the other
two contain additional elements, namely, in one case, a stylized design over
which the word “PIZZAIOLLE” appears, and in the
other, the word “RESTAURANTS” and the depiction of a tomato below the word “PIZZAIOLLE”.
[68]
In my view, the Registrar ought to have engaged
in a similar reflective exercise with regard to the Graphic Mark PIZZAIOLO and
asked himself whether, in this specific case, the applicant, by a future use of
its registered word mark, could, as it has previously done, represent or “dress up” so to speak, the word PIZZAIOLLE in a
manner identical or very similar to that Graphic Mark. A reading of the Registrar’s
decision shows that such a reflection was not carried out, even though the Registrar
was aware that the word PIZZAIOLLE was – and had previously been – depicted in
the form of special designs.
[69]
The Registrar
did in fact consider, as was indicated in Masterpiece, subsequent use
the respondent may make of the Word Mark PIZZAIOLO. However, there is nothing
in the law or the jurisprudence to indicate that this exercise should be
limited to examining the issue of the likelihood of confusion between the Word
Mark PIZZAIOLO and the applicant’s registered word mark or that the exercise
did not also apply, accordingly, to the issue of the likelihood of confusion
with the Graphic Mark PIZZAIOLO.
[70]
In this case, the Graphic Mark PIZZAIOLO is
formed using the word PIZZAIOLO written on a green oval background, accompanied
by the words “GOURMET PIZZA”. As was the case
with the words “Living” and “Art of Living” in Masterpiece, the words “GOURMET PIZZA” are in no way “striking
or unique” (Masterpiece, above, at paras 64 and 84). That, as the
applicant pointed out, is a generic expression bereft of any distinctive
character.
[71]
The word PIZZAIOLO is therefore the dominant
element of the Graphic Mark, hence the importance of including in the analysis
of the likelihood of confusion the possible subsequent uses of the word
PIZZAIOLLE, particularly in the context where the Word Mark PIZZAIOLO has been
deemed to be likely to create confusion with the applicant’s registered word mark.
[72]
Had this been done, the correct conclusion would
have been that the applicant is authorized to represent its trade-mark in a
manner identical or very similar to the respondent’s Graphic Mark, that is to
say with the same style of lettering and the same background colour, thereby
clearly giving rise, due to the resemblance between the words PIZZAIOLLE and
PIZZAIOLO, to a likelihood of confusion between the marks in question.
[73]
The Registrar determined that the respondent had
discharged its burden of proof with regard to the Graphic Mark PIZZAIOLO “owing to the more pronounced differences” between
this Graphic Mark and the Word Mark LA PIZZAIOLLE (or its variant PIZZAIOLLE),
as depicted in the designs reproduced at paragraph 20 of this judgment. However,
in deciding in such a way, the Registrar clearly did not consider the different
uses, in terms of the size and style of lettering, or colour and design, that the
applicant could make of the word PIZZAIOLLE. As the Supreme Court noted in Masterpiece,
“a subsequent use that is
within the scope of a registration, and is the same or very similar to an
existing mark will show how that registered mark may be used in a way that is
confusing with an existing mark” (Masterpiece,
above, at para 59).
[74]
This is not a case of deciding whether the
rights that the registration of the word mark LA PIZZAIOLLE confers upon the
applicant authorizes it to add symbols or other distinctive designs to that
mark. It is sufficient to determine whether the applicant is entitled to
eventually use the word PIZZAIOLLE in a size, style of lettering, colour and
design or graphic form that would render it the same or very similar to the Graphic
Mark PIZZAIOLO. In light of Masterpiece, above, I find that it is so
entitled and the addition of generic and non-distinctive words such as GOURMET
PIZZA, is of no consequence, as were the additions of graphic forms it had
previously used or that it currently uses to depict the word PIZZAIOLLE, on the
lawfulness of that subsequent use.
[75]
Thus, I have arrived at the conclusion that in
neglecting this factor, the Registrar committed a determinative error which
affects the reasonableness of his decision to dismiss the applicant’s ground of
opposition based on the likelihood of confusion having regard to the
application for registration of the Graphic Mark PIZZAIOLO.
[76]
It strikes me as surprising that the likelihood
of confusion between the Word Mark PIZZAIOLO and the applicant’s registered
word mark LA PIZZAIOLLE (or its variant PIZZAIOLLE) is taken as fact but that
this is not extended to the Graphic Mark when the dominant element of that mark
happens, in fact, to be the word PIZZAIOLO and when the applicant is authorized
to the subsequent use of the word PIZZAIOLLE which would render its appearance
identical or very similar to that of the Graphic Mark. This, at least is the
kind of situation envisaged in Masterpiece when it is a matter of
protecting rights granted by the registration of a trade-mark.
[77]
It is difficult to imagine, in this context,
that an ordinary consumer in a hurry, looking at the Graphic Mark PIZZAIOLO and
the word PIZZAIOLLE depicted in a size and style of lettering as well as in
colours similar to the Graphic Mark, would not have, as their first impression,
that the wares and services associated with the marks were produced, sold or
provided, as the case may be, by the same person.
[78]
In short, this differentiation in the treatment
of the issue as to the likelihood of confusion, and in particular the concept
of subsequent use, of the two marks that the respondent seeks to register, has,
in my view, caused a breakdown in the rationality of the Registrar’s decision,
thus placing it outside of the range of possible, acceptable outcomes which are
defensible in respect of the facts and law.
[79]
For all these reasons, the applicant’s appeal is
allowed and the Registrar’s decision dismissing the applicant’s opposition to
the registration of the Graphic Mark is set aside, with costs in favour of the applicant.
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