This was an appeal of the decision of the Trademarks Opposition
Board ("TMOB"), refusing in part the Applicant's
registration of the trademark CAESARSTONE & Design.
The central issue raised by the Applicant against the TMOB's
Decision was an alleged unreasonable finding of a likelihood of
confusion between the Applicant's CAESARSTONE Mark proposed to
be used for the Opposed Services relating to flooring and similar
applications, and the Opponent's CAESAR Mark.
On the issue of the appropriate standard of review, the Court
held that the TMOB's decision was to be reviewed on a standard
of reasonableness. While the Applicant had submitted new evidence,
the Court did not find that this new evidence would have materially
affected the TMOB's findings of fact or its exercise of
discretion. The new evidence was found to be supplemental to, and
simply more of the same of, that which was before the TMOB when it
rendered its decision.
The Court allowed the appeal with respect to the TMOB's
consideration of the likelihood of confusion in relation to certain
Opposed Services (tiles, slabs and tiles formed of composite stone,
and wall cladding and walls), and the matter was referred to a
different member of the TMOB for redetermination. The Court found
that the TMOB's conclusion that the certain of the Opposed
Services were a departure from, rather than an extension of,
certain of the goods covered by the Applicant's earlier
CAESARSTONE registration, was unreasonable. The Court also noted
that this unreasonable conclusion may have affected the TMOB's
assessment of the likelihood of confusion.
While this was but one factor, and a surrounding circumstance to
be considered in assessing likelihood of confusion, this
unreasonable conclusion impacted the outcome and the reasonableness
of the TMOB's assessment of other factors, including the weight
afforded to the lack of actual confusion in the marketplace where
both have coexisted, at least with respect to the Opposed Services
relating to tiles, slabs and tiles formed of composite stone and
wall cladding and walls.
The appeal of the TMOB's decision in relation to the
remaining Opposed Services was dismissed.
Sandoz Canada Inc. has discontinued its application for leave to
appeal from the Federal Court of Appeal's decision, where the
Court of Appeal reinstated the PMPRB's jurisdiction over
generic companies considered to be "patentees" within the
meaning of subsection 79(1) of the Patent Act (2015 FCA 249 and summarized the
week of November 9, 2015; granting the appeal from two
decisions reported at 2014 FC 501 & 2014 FC 502 and summarized the
week of June 2, 2014).
The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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