Les Restaurants La Pizzaiolle Inc. v. Pizzaiolo Restaurants Inc., (2015) 472 F.T.R. 7 (FC)

• Judge: LeBlanc, J.
• Court: Federal Court (Canada)
• Case Date: September 11, 2014
• Jurisdiction: Canada (Federal)
• Citations: (2015), 472 F.T.R. 7 (FC);2015 FC 240

Restaurants Pizzaiolle v. Pizzaiolo Restaurants (2015), 472 F.T.R. 7 (FC)

MLB headnote and full text

Temp. Cite: [2015] F.T.R. TBEd. MR.024

Les Restaurants La Pizzaiolle Inc. (applicant) v. Pizzaiolo Restaurants Inc. (respondent)

(T-1605-13; 2015 FC 240)

Indexed As: Les Restaurants La Pizzaiolle Inc. v. Pizzaiolo Restaurants Inc.

Federal Court

LeBlanc, J.

February 24, 2015.

Summary:

Pizzaiolo Restaurants Inc. (Pizzaiolo) applied to register the trademarks "Pizzaiolo" and design (the graphic mark) and "Pizzaiolo" (the word mark). Les Restaurants La Pizzaiolle Inc. (Pizzaiolle) filed a statement of objection, asserting that, inter alia, Pizzaiolo's proposed marks were confusing with its registered word mark, "La Pizzaiolle" (or the variant "Pizzaiolle"), which was in use in Canada prior to Pizzaiolo's claimed date of first use. The Registrar of Trademarks allowed the opposition respecting the applied-for word mark on the basis of confusion. The Registrar allowed the opposition respecting registration of the applied for graphic mark in association with wares and services for which Pizzaiolo had not established use at the claimed date of first use, but otherwise dismissed the opposition. Pizzaiolo appealed the portion of the decision that rejected its opposition to the registration of the applied-for graphic mark.

The Federal Court allowed the appeal.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - In Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), the Supreme Court of Canada examined the basic approach to be adopted in determining whether competing trademarks created confusion - The Federal Court stated that "This is what I retain from the Supreme Court's teachings on this issue: i. 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 ...; ii. The expression 'degree of resemblance' from paragraph 6(5)(e) [of the Trade-marks Act] 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 ...; iii. 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; ...iv. 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 ..." - See paragraph 61.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Pizzaiolo Restaurants Inc. (Pizzaiolo) applied to register the trademarks "Pizzaiolo" and design (the graphic mark) and "Pizzaiolo" (the word mark) - Les Restaurants La Pizzaiolle Inc. (Pizzaiolle) filed a statement of objection, asserting that, inter alia, Pizzaiolo's proposed marks were confusing with its registered word mark, "La Pizzaiolle" (or the variant "Pizzaiolle") - The Registrar of Trademarks allowed the opposition respecting the applied-for word mark on the basis of confusion - The Registrar allowed the opposition respecting registration of the applied-for graphic mark in association with wares and services for which Pizzaiolo had not established use at the claimed date of first use, but otherwise rejected the opposition - The Federal Court allowed Pizzaiolo's appeal of the rejection - In his analysis of confusion, the Registrar was required to consider possible future uses of "La Pizzaiolle", both with regard to the applied-for word mark and graphic mark - The Registrar erred in considering future use in relation to only the applied-for word mark - If he had considered future use in relation to the graphic mark, he would have recognized that Pizzaiolle was authorized to use its word mark "in any size, and with any style of lettering, colour or design", and therefore, to depict its mark in an identical or very similar way as the applied for graphic mark - The Registrar's rejection of the opposition was unreasonable - See paragraphs 66 to 79.

Trademarks, Names and Designs - Topic 889.5

Trademarks - Registration - Expungement of mark - Grounds - Confusion - [See first Trademarks, Names and Designs - Topic 706 ].

Cases Noticed:

Masterpiece Inc. v. Alavida Lifestyles Inc., [2011] 2 S.C.R. 387; 416 N.R. 307; 2011 SCC 27, appld. [para. 25].

Ministry of Commerce and Industry of the Republic of Cyprus v. Producteurs Laitiers du Canada et al. (2010), 393 F.T.R. 1; 2010 FC 719, refd to. [para. 41].

New Brunswick (Board of Management) v. Dunsmuir, [2008] 1 S.C.R. 190; 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 2008 SCC 9, refd to. [para. 46].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340; 2006 SCC 22, refd to. [para. 50].

Veuve Clicquot Ponsardin v. Boutiques Cliquot ltée et al., [2006] 1 S.C.R. 824; 349 N.R. 111; 2006 SCC 23, refd to. [para. 54].

Miss Universe Inc. v. Bohna, [1995] 1 F.C. 614; 176 N.R. 35; 58 C.P.R.(3d) 381 (F.C.A.), refd to. [para. 54].

Labatt (John) Ltd. v. Molson Companies Ltd. (1990), 36 F.T.R. 70; 30 C.P.R.(3d) 293 (T.D.), affd. (1992), 144 N.R. 318; 42 C.P.R.(3d) 495 (F.C.A.), refd to. [para. 57].

Ministry of Commerce and Industry of the Republic of Cyprus v. Producteurs Laitiers du Canada et al. (2011), 420 N.R. 124; 93 C.P.R(4th) 255; 2011 FCA 201, refd to. [para. 57].

Mr. Submarine Ltd. v. Amandista Investments Ltd., [1988] 3 F.C. 91; 81 N.R. 257; 19 C.P.R.(3d) 3 (F.C.A.), refd to. [para. 61].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 6(2) [para. 53]; sect. 6(5) [para. 56].

Counsel:

Barry Gamache, for the applicant;

Simon Hitchens, for the respondent.

Solicitors of Record:

Robic LLP, Montreal, Quebec, for the applicant;

Gowling Lafleur Henderson LLP, Toronto, Ontario, for the respondent.

This appeal was heard at Montreal, Quebec, on September 11, 2014, by LeBlanc, J., of the Federal Court, who delivered the following judgment on February 24, 2015.