Restaurants La Pizzaiolle Inc. v Pizzaiolo Restaurants Inc., 2015 FC 240 (LeBlanc J.)
February 24, 2015
Barry Gamache for the Applicant
Simon Hitchens for the Respondent
The applicant’s appeal under section 56 of the Trade-marks Act was allowed in part with costs.
The applicant has operated several pizzerias in the Montreal region under the trade name La Pizzaiolle (or the variant Pizzaiolle) since the early 1980s. The respondent has been doing the same in the Toronto region under the trade name Pizzaiolo since the early 2000s. The decision of the Registrar of Trademarks dated July 4, 2013 allowed in its entirety the applicant’s opposition to registration of the word mark Pizzaiolo and allowed in part the design mark Pizzaiolo, determining that the design mark was not confusing with the word mark filed by the applicant, La Pizzaiolle, but that it could only be used with certain wares and services described in the relevant application.
On appeal, the key issue was whether the Registrar erred in rejecting the applicant’s opposition to the registration of the design mark Pizzaiolo based on the applicant’s word mark La Pizzaiolle.
Justice LeBlanc concluded that the Registrar failed in its analysis of the likelihood of confusion to take into account potential uses of the word mark La Pizzaiolle and misapprehended the scope of Masterpiece v Alavida Lifestyles Inc., [2011] 2 SCR 387. Rather, Justice LeBlanc found that the word mark La Pizzaiolle or Pizzaiolle “in any size, and with any style of lettering, colour or design” was depicted in an identical or very similar manner to that of the design mark Pizzaiolo. As such, the Registrar’s conclusion was flawed and outside of the range of possible, acceptable outcomes defensible in fact and law.
By: Katie L. Wei