The Applicant had opposed the registration of two marks, PIZZAIOLO and Design and PIZZAIOLO. The Registrar had refused the word mark and allowed the design mark as used with certain wares and services. This is an appeal of the Registrar’s decision under section 56 of the Trademarks Act.
Both parties own pizzerias. The Applicant has owned LA PIZZAIOLLE in Montreal since the 1980s.
The respondent has owned PIZZAIOLO, in Toronto since the 2000s. The respondent sought to register the challenged marks in 2008, and the applicant opposed, claiming confusion with its own registered mark
The Court held the Registrar erred in failing to take into account, in his analysis of the likelihood of confusion, the potential uses that the registration of the registered word mark LA PIZZAIOLLE (or its variant PIZZAIOLLE) confers upon the applicant. Following Masterpiece, the Court found the registered word mark permitted the Applicant to use the words LA PIZZAIOLLE “in any size, and with any style of lettering, colour or design”, and, therefore, to depict these words in an identical or very similar manner to that of the design mark PIZZAIOLO.
The appeal was allowed and the Registrar’s decision dismissing the applicant’s opposition to the registration of the Graphic Mark was set aside.