Canada: The Impact Of A Design In A Trademark Dispute Revisited - 2016

Last Updated: December 5 2016
Article by John McKeown

In our newsletter article of March 2015 we discussed a decision of the Federal Court which had given little weight to the use of a design element consisting of an oval shaded background of a trademark. An appeal from this decision has been dismissed.

Facts

The applicant filed two trademark applications based on use in association with, among other things, gourmet pizza and restaurant services. The first application related to the word PIZZAIOLO. The second application related to the design shown below.

The Opposition

The opponent opposed both of the applications on the basis that the applied-for marks were confusing with its registered trademark LA PIZZAIOLLE (or the variant PIZZAIOLLE), which had been used by the opponent in Canada prior to the applicant's claimed date of first use. The specific grounds of opposition alleged that the applied-for marks were not registrable, not distinctive and that the applicant was not the person entitled to registration.

The Trademarks Opposition Board Decision

The hearing officer allowed the opposition and refused the application for the word mark in its entirety. However, with respect to the PIZZAIOLO DESIGN application, the opposition was refused and the application allowed to proceed to registration. The hearing officer determined that the applicant had satisfied its onus to show the mark should be registered "owing to the pronounced differences" between the design mark and the opponent's registered trademark.

The Federal Court Decision

The primary issue before the court involved the determination of whether the two trademarks were confusing. The judge concluded that this determination must be considered from the point of view of an average consumer.

In particular, the determination must be made on the basis of a first impression in the mind of a casual consumer somewhat in a hurry, who had no more than an imperfect impression of the mark that had been registered and did not pause to give the matter any detailed consideration, scrutiny, or to examine closely the similarities or the differences between the marks. The application of this test requires an overall examination of the marks in issue, without close scrutiny or a side by side comparison.

The judge referred to the well-known Masterpiece decision of the Supreme Court of Canada. In particular he emphasized that when an opponent relies on a registered word mark, the assessment of confusion must give consideration to not only the current form of use of the registered trademark but also the likelihood of confusion arising from the use of the mark that is permitted by the registration. The current use of a registered word mark does not limit the rights of its owner because the registration grants the owner of a word mark the right to use the words that constitute the mark in any size and with any style of lettering, colouring or design.

Applying this principle, the judge determined that the hearing officer ought to have recognized that the opponent was authorized, based on the rights granted to it from the registration of its word mark LA PIZZAIOLLE, to 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 a manner identical to or very similar to that of the PIZZAIOLO Design mark with the same style and colour of lettering as well as the same background colour.

The judge said that the applicant's design mark was made up of the word PIZZAIOLO written on a green oval background, accompanied by the words "GOURMET PIZZA". These words were in no way striking or unique and of a generic nature. The word PIZZAIOLO was the dominant element of the design mark.

As a result of the hearing officer's failure to carry out such an analysis the judge concluded that the hearing officer had committed an error which affected the reasonableness of his decision and the appeal was allowed.

The Federal Court of Appeal

The only issue before the appeal court was whether the judge of the Federal Court had properly applied the reasonableness standard that applies to decisions made by the hearing officer. In order to apply this standard the court was required to focus on the hearing officer's decision.

Applying this approach the court concluded that there was nothing inherently distinctive in the use of an oval design as the background for the applied-for mark. The word PIZZAIOLO continued to be the dominant feature of the design mark. As a result, when one considered the two marks in the same context as was mandated by Masterpiece there were no more differences than when comparing the two word marks concerning which the hearing officer had concluded that there was a likelihood of confusion.

The court observed that the registration of the PIZZAIOLO DESIGN application would provide some flexibility as to how the applicant could use it; however, the registration of a specific design limits the graphic variant that would constitute use by the applicant of its registered mark pursuant to section 4 of the Act. The deviations from the registered design must not change the distinctiveness of the mark; it must retain its dominant features.

In light of this finding, the court concluded that but for the error of law made by the hearing officer (the failure to consider the full scope of the rights confirmed by the registration of the opponent's mark), the officer could only reach the same conclusion with respect to the design mark as was reached with respect to the word mark. The decision to dismiss the opposition concerning a design mark was not within the range of acceptable and defensible outcomes and the Federal Court had properly applied the reasonableness standard of review. As a result, the appeal was dismissed.

Before concluding its decision the court said that one should be careful not to give the principle set out in the Masterpiece case previously referred to, too great a scope, for there would no longer be any need to register a design mark when one has a word mark. The current decision was entirely based on the facts of the case and the officer's finding as to what would constitute a proper use of the registered trademark. When comparing marks one is always limited to "use that is within the scope of the registration".

The court has previously said that cautious variations of a registered mark can be made without adverse consequences if the same dominant features are maintained and the differences are so unimportant that an unaware purchaser of the goods would not be misled. This principle provides guidance as to what graphic or other deviations from a mark as registered are acceptable.

Comment

Hopefully this decision will prevent the overly broad application of the principle that on an assessment of confusion consideration must be given to not only the current form of use of the registered trademark but also the likelihood of confusion arising from the use of the mark that is permitted by the registration. In this regard, the permitted versions of the mark will be restricted to the versions that maintain the same dominant features as the mark and the differences must be so unimportant that an unaware purchaser would not be misled.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
John McKeown
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions