The Federal Court recently issued a decision in Little Brown Box Pizza, LLC v. DJB, 2024 FC 1592.
Little Brown Box Pizza had appealed a decision by the Registrar of Trademarks to expunge its registration for the mark PIEOLOGY. The registration issued on February 19, 2016 and covered, among other services, "restaurant services".
Little Brown Box Pizza filed a new affidavit in the appeal. The new affidavit asserted that several thousand unique users in Canada had visited the PIEOLOGY website operated by Little Brown Box Pizza and that at least one Canadian downloaded the PIEOLOGY mobile app. Furthermore, the new affidavit provided that the website and mobile app permitted consumers to review menus, look up restaurant locations in the United States, pre‑plan customized pizzas, save favourite pizzas for future ordering, and receive news about product offerings.
The Court was satisfied that the services available via the website and the mobile app constituted ancillary restaurant services that were intended to target Canadian consumers, even though no product could be ordered from the website and no restaurants were operating in Canada. This was sufficient to constitute use of the trademark in Canada in association with "restaurant services."
However, the Court was not persuaded that there were special circumstances that would excuse non-use of the remaining services in the registration.
As a result, the appeal was allowed in part, and the registration for PIEOLOGY was maintained only in association with "restaurant services."
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