In a decision by Fuhrer J., the Federal Court allowed an appeal against the Registrar’s decision to register a trademark owned by Carbone Restaurant Group Ltd. (“Carbone”), after the Trademarks Opposition Board (“TMOB”) had rejected an opposition by Blaze Pizza, LLC. (“Blaze”)
Blaze Pizza, LLC v. Carbone Restaurant Group Ltd., 2024 FC 1770
Background
Carbone’s predecessor filed a trademark application for FAST FIRED BY CARBONE & Design (“Carbone Mark”) for proposed use in association with restaurant, take-out, delivery and catering services. This application was opposed by Blaze.
Blaze relied on its Canadian registered trademarks of FAST FIRE’D BLAZE PIZZA & design and BLAZE PIZZA, its mark FAST FIRE’D used in Canada since 2015, and its US registered trademark of FAST FIRE’D (“Blaze Trademarks”). Blaze raised the following grounds:
- The Carbone Mark was confusing with the previously used Blaze Trademarks (paragraph 16(3)(a)[1]),
- The Carbone Mark was confusing with the registered Blaze Trademarks (paragraph 12(1)(d)),
- Carbone was not entitled to use the Carbone mark in Canada in association with the specified services, because Carbone was aware of the Blaze’s prior rights in the Blaze Trademarks and had appropriated numerous elements of the trade dress therein, creating consumer confusion (paragraph 30(i)), and
- The Carbone Mark was not distinctive (section 2).
Blaze filed two affidavits before the TMOB, one from its co-founder and the other from a trademark searcher. Carbone filed the affidavit of its President and CEO. The TMOB rejected each ground advanced by Blaze. As summarized by the Court (underline added):
“First, the TMOB found that the [Carbone] Mark was not confusing with the Blaze Trademark. Second, the TMOB was not satisfied that Blaze had established its use of any variations of the Blaze Trademark in Canada in a manner and to an extent sufficient to support a reasonable likelihood of confusion. Third, the TMOB held that Blaze had not met its evidential burden regarding the ground based on paragraph 30(i) of the TMA.”
Issues
The Court identified three issues to be addressed in this appeal:
- Does Blaze’s new evidence warrant a de novo review?
- Does the entirety of the evidence still lead Carbone to entitlement to registration pursuant to subsection 16(3) of the Trademarks Act?
- Pursuant to section 2 of the Trademarks Act, is the mark not distinctive?
Blaze’s New Evidence
On the appeal, Blaze submitted two additional affidavits, one from its CFO (“Reynolds Affidavit”), and the other, from a law clerk employed by Blaze’s former counsel (“DeBorba Affidavit”). The Reynolds affidavit contained historical data on the distribution, sale, in-store display instructions for pizza boxes that have been used since 2015, and data on the proportion of the market held by Blaze. The instructions described in the affidavit were that Canadian franchisees were required to “display stacks of pizza boxes in [a] unique alternating pattern, typically behind the customer counter.” The DeBorba Affidavit contained higher-quality colour documents that had been previously submitted to the TMOB.
Standard of Review
New evidence filed under section 56(5) of the Trademarks Act requires the Court to consider whether that evidence would have materially affected the TMOB’s decision. The evidence must be substantial, significant, and of probative value for it to be considered material, though it is not required that the evidence have changed the TMOB decision’s outcome, nor the decision-maker’s mind. It is important only that the evidence is of high-quality, not that it is determinative. The Court can then take the position of the Registrar to exercise its discretion, or substitute its own decision on a correctness standard.
If the evidence is not material, then a reasonableness standard is applied, and the “palpable and overriding error” assessment is applied to questions of mixed fact and law. Questions of law alone are to be addressed on a correctness standard.
Analysis
A. Materiality of Blaze’s New Evidence
The Court found that Blaze’s new evidence was material, as it filled gaps that existed in the record before the TMOB where the Registrar had decided not to allow the Opposition.
Blaze’s new affidavits substantiated where Blaze’s initial affidavits were silent, discussing display tactics and “the extent to which this particular box design has been distributed”. Their initial affidavit deficiencies had even prompted the Registrar to comment that, if presented, “the parties’ colour schemes, and the variations in the form of the trademarks in actual use, could gain importance”. The Court found this new evidence to be material, as it would have informed the TMOB’s decision regarding both entitlement and distinctiveness.
B. Carbone’s Entitlement to Register the Mark
The Court summarized the test for confusion, as at section 6(2) of the Trademarks Act, as follows:
“[The] use of a trademark will cause confusion with another trademark, as to the source of the associated goods or services, if the use of both of them in the same area would be likely to lead to the inference that the goods or services are manufactured, sold, leased, hired or performed by the same person. The likelihood of confusion is to be assessed from the perspective of the first impression on a casual, hurried consumer, with an imperfect recollection of an opponent’s trademark, who sees an applicant’s trademark and does not pause to give the matter any detailed consideration nor to examine closely the similarities and differences between the trademarks”
The Court dealt first with the degree of resemblance, second, with the extent to which the parties’ marks have become known, third, surrounding circumstance of trade dress, and finally reached at the overall weighing of section 6(5) factors.
Degree of Resemblance
The Court found that, while not all of Blaze’s arguments were convincing, the similarities of the parties’ marks was reinforced, and that the confusion analysis favoured Blaze.
The Court, at paragraph 66, found that the word FAST-FIRE’D was equally prominent, based in part on the fact that the marks were displayed on pizza boxes in a way more specifically articulated in the newer affidavits;
“The display of the flame design in a circle to the left of FAST-FIRE’D in the pizza box variation contributes, in my view, to the overall resemblance in appearance between the Blaze Trademark and the Mark which similarly features a flame design, somewhat circular in shape, to the left of the words FAST FIRED (under which are the words BY CARBONE in smaller lettering). In other words, I determine that the degree of resemblance factor favours Blaze.”
Extent to Which the Parties’ Marks Have Become Known
The evidence contained in Blaze’s additional affidavits was critical to the determination of this factor by the Court. Per the Reynolds Affidavit at paragraph 68 of the decision, “80% of the 2.19 million pizzas Blaze sold in Canada between 2015 and January 28, 2019 were sold in pizza boxes like those shown above with FAST FIRE’D displayed on one side of the box. This means that 1.73 million boxes circulated in Canada during this period.” When accounting for the relevant date in this proceeding, the sale of “approximately 830,000 pizzas in boxes are relevant to the entitlement ground.” The Court inferred that the remaining 20% of pizzas that were sold in-store and not in pizza boxes were nonetheless involved the display of boxes at the point of sale.
Carbone’s evidence on this point included a photo of Carbone’s restaurant store sign used on all FAST FIRED BY CARBONE restaurant locations and attests to the opening of Carbone’s first FAST FIRED BY CARBONE restaurant in Brandon, Manitoba in March, 2018. However, the Court held that Carbone’s evidence pertains to Carbone’s use of the Carbone Mark after the filing of trademark application.
Hence, the Court favoured Blaze in terms of the extent to which the parties’ marks have become known.
Surrounding Circumstance: Trade Dress
The new Blaze evidence about the circulation and display of the boxes in Canada added information to the surrounding circumstances. The pizza boxes used by Blaze bore a variation of the registered Blaze Trademark. This variation was initially discounted by the TMOB, but in the context of the new evidence presented, the Court found that there were more significant surrounding circumstances that favoured Blaze, and, hence, considered the variation in the overall weighing exercise.
Overall Weighing of the 6(5) Factors
In light of the three reconsidered factors, the Court found that the likelihood of confusion balance favoured Blaze, while the elements not reconsidered were undisturbed for lack of evidence or argument to the contrary. The inherent distinctiveness factor, 6(5)(a), was found not to favour either party.
The Court held that Carbone bore the ultimate onus of demonstrating that the marks at issue were not confusing. However, because Carbone did not participate in the appeal, the new evidence led the Court to find for Blaze.
Having made out a likelihood of confusion, the Court found that Blaze had succeeded in its opposition pursuant to paragraph 16(3)(a) of the Trademarks Act.
C. The Mark is Not Distinctive of Carbone
The Court also concluded that any distinctiveness acquired by Carbone since 2018 has been displaced by the sufficient, if not significant reputation held in the Blaze Trademark as well as the standalone FAST FIRE’D mark. Further, the Court cited Bojangles’ International LLC v Bojangles Café Ltd, 2006 FC 657 at para 34 to hold that Blaze had the onus to demonstrate, regarding its own marks, that as of the opposition filing date “[the] mark must be known in Canada to some extent at least to negate the established distinctiveness of another mark, and its reputation should be substantial, significant or sufficient.”
The Court held that since the relevant date for determination of distinctiveness is the opposition filing date, the statistics regarding 80% of the 2.19 million pizzas boxes sold by Blaze between 2015 and the opposition filing date remain relevant for consideration. The Court found this evidence significant and sufficient to negate the Carbone Mark’s distinctiveness. Where the TMOB had found sufficient evidence to demonstrate the use of the Blaze Trademark, but not for the FAST-FIRE’D trademark on its own, the Court now had sufficient evidence of both as a result of the data related to Blaze’s pizza boxes.
Conclusion
Carbone did not establish, on a balance of probabilities, that it had met its onus to establish its entitlement to register the Mark, and that its Mark is distinctive. Blaze therefore succeeded on its appeal, and the opposition was allowed.
The parties have thirty days from the date of the judgment to appeal to the Court of appeal as of right.
[1] The provisions mentioned in the grounds of opposition related to the older version of Trademarks Act as it existed from December 30, 2018 to June 16, 2019.