Arecent decisionof the Federal Court of Appeal has further clarified the law concerning the useof a design element in a trademark.
The Facts
Theapplicant filed an application to register a design mark for use in associationwith apple-based alcoholic and non-alcoholic beverages and other appleproducts. The design is shown below:
Theapplication was opposed by the owner of the trademark PINNACLES registered foruse in association with the sale of (grape) wine.
The Opposition
Thematter proceeded before a hearing officer of the Trademarks Opposition Board. TheBoard concluded that confusion was unlikely to occur, taking into accountthe language of subsection 6(2) of the TrademarksAct, the factors enumerated in subsection 6(5), and relevant jurisprudence,including the well-known Masterpiece case.The hearing officer saidthat the inherent distinctiveness of both of the marks was relatively weak,although the applicant’s design mark was more distinctive than the opponent’smark. While there was a fair degree ofresemblance between the respective marks, the hearing officer decided that thevisual elements of the two marks was sufficiently different and the markssuggested different ideas. As a result,the opposition was dismissed.
The Federal Court
Theopponent appealed to the Federal Court. Thejudge found that the Board had erred in law as sufficient consideration was notgiven to the potential use that the opponent might have made of its registeredword mark. The judge took the position basedon the Masterpiece case that when a word mark was involved, thetrademark owner should be permitted to use the word in any size or any style oflettering, colour or design. Thisapproach gives full effect to the trademark registration according to its termsand reflects the entire scope of the rights granted to the trademarkowner. As a result, the appeal wasallowed and the application was dismissed.
The Federal Court ofAppeal
Theapplicant appealed to the Federal Court of Appeal. The court agreed with the applicant that thefull scope of the rights granted in association with the opponent’s registeredtrademark would not permit it to use the distinctive graphic elements – theapple and snowflake design of the applicant’s mark – that the Board hadidentified as being central to the distinctiveness of the applicant’smark. This distinction was alsoconsistent with the applicant’s goods which were apple-based. In addition thecourt noted that design elements were also protected by copyright.
Thecourt agreed with the Board’s finding that neither of the marks had a highdegree of distinctiveness as the word “PINNACLE”, the most notable element ofeach of the marks, was a commonly used term. Design and context must play a greater role in distinguishing theopponent’s mark from the numerous other registered trademarks in Canada thatinclude the word “PINNACLE”. As aresult, the appeal was allowed, the decision of the Federal Court set aside andthe application allowed.
Comment
Forthose who read these comments, the writer certainly had concerns with respectto the trial decisionin this case and decisionin the Pizzaiolo case whichseemed to give too much weight to a word mark owner’s right to use the mark inany form.
Werecently discussed another recent decisionof the Federal Court of Appeal in which the court appeared to attempt to reignin the overly broad application of the principle from the Masterpiece, case. In the decision at hand the Federal Court of Appeal further clarifies theapplication of the principle by refusing to extend it to distinctive graphicelements.
John McKeown
Goldman SloanNash & Haber LLP
480University Avenue, Suite 1600
Toronto,Ontario M5G 1V2
Direct Line:(416) 597-3371
Fax: (416)597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legaladvice as individual situations will differ and should be discussed with alawyer.
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