A recent decision of the Federal Court once again gives
little weight to the use of a design element in a trademark
The applicant filed a trademark application based on use in
association with apple-based alcoholic beverages and based on
proposed use in association with apple-based non-alcoholic products
all in association with the design shown below:
The opponents opposed the application on the grounds, among
others, that there was a likelihood of confusion between the
applied-for mark and the opponent's trademark PINNACLE,
PINNACLE & DESIGN, PINNACLES and PINNACLES RANCHES for wines.
The specific grounds of opposition alleged that the mark was not
registrable because it was confusing with the registered trademark
that the applicant was not entitled to registration since it was
confusing with the opponent's trademark as set out above.
The hearing officer referred to the statutory test for confusion
and said that regard must be had to all the surrounding
circumstances as listed by the Act, namely, (a) the inherent
distinctiveness of the trademarks and the extent to which they have
become known; (b) the length of time the trademarks have been in
use; (c) the nature of the wares, services or business; (d) the
nature of the trade; and (e) the degree of resemblance between the
trademarks in appearance or sound or in the ideas suggested by
them. This list is not exhaustive and all relevant factors are to
be considered. Further, all factors are not necessarily attributed
equal weight as the weight to be given to each depends on the
The key issue was whether a consumer who had a general and not
precise recollection of the opponent's trademark PINNACLES
would be likely upon seeing the applied-for mark to believe that
they were associated or shared a common source.
The hearing officer concluded that there was not a reasonable
likelihood of confusion between the respective marks. While there
were some overlapping channels of distribution all of the other
factors favoured the applicant. There was a fair degree of
resemblance between the respective marks as the dominant element
was the word PINNACLE, but the ideas suggested by the marks were
quite different. The applicant's mark contained an apple
element which was linked to apple-based products while the
opponent's mark suggested a plurality of summits or
The opponents appealed to the Federal Court from the hearing
officer's decision. While additional evidence was filed the
judge determined that the standard of review was reasonableness
which means that the hearing officer's expertise must be given
deference and the court will intervene only if the decision is
After the record and factums in this case had been filed with
the court, the decision in Restaurants la Pizzaiolle Inc.
v. Pizzaiolo Restaurants Inc. was released. The opponents
argued that decision was determinative of this case. We discussed
this case in our newsletter article of March.
The judge said that the determinative issue in the appeal was
the error made by the hearing officer in the determination of the
degree of resemblance between the marks together with the impact
that this error had on the Board's analysis of the other
factors under the confusion test.
The judge said that the registration of a word mark granted to
the owner the right to use the mark in any way, shape or form that
it wished including the same style of lettering and design that the
applicant had used in its applied-for design mark.
The judge in the Pizzaiolle case had left the door open
to distinctions being made between symbols and distinctive designs
on the one hand and lettering, colour and design or graphic on the
other hand. However, the judge in this appeal did not agree there
should be such a distinction.
The judge concluded that based on the Masterpiecedecision so long as a registered word mark was
relied on in an opposition, the question of potential uses included
in a registration was pertinent and not distinguishable. It made no
difference that the applied-for mark was a design mark. The Board
should have taken into account that the registered word mark
PINNACLE could have had a different style of lettering, colour or
design which would have suggested the same features that the
hearing officer referred to in this case to distinguish the
This decision is even more surprising than the
Pizzaiolle decision which we believe is under appeal.
The two decisions are troubling since they appear to interpret
the Masterpiece decision in an overly broad fashion. It seems more
reasonable to interpret the reference to "design" in
Masterpiece as referring to the presentation of the word(s) of a
word mark not the surrounding elements.
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The Federal Court made a sweeping statement in Justice Locke's decision released last Friday that submissions made to the CIPO during patent prosecution can re-emerge to haunt litigants and hit them where it hurts: the wallet.
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