(Disponible uniquement en anglais)
The Honourable Justice Fuhrer
Smart and Biggar LP for the Applicant
No One Appearing for the Respondent
Blaze Pizza, LLC v. Carbone Restaurant Group Ltd., 2024 FC 1770
November 6, 2024
This decision concerns an appeal from a decision of the Trademarks Opposition Board (“TMOB”), which dismissed the Applicant’s opposition to the Respondent’s application for the FAST FIRED BY CARBONE & Design trademark. The opposition was based on, among other things, the Applicant’s ownership of a registration for a FAST FIRE’D BLAZE PIZZA & Design trademark (the “Blaze Trademark”) as well as its alleged prior use of the FAST FIRE’D trademark in Canada.
The TMOB rejected the Applicant’s opposition at first instance, finding that the Respondent’s trademark was not confusing with the Applicant’s trademarks, and further, that the Applicant failed to establish use of its trademarks in Canada in a manner and to an extent sufficient to support a reasonable likelihood of confusion. The TMOB’s findings regarding lack of confusion were largely driven by its finding that the Applicant’s BLAZE Trademark suggested a different idea from the Respondent’s BY CARBONE-formative trademark.
The Court found that the new evidence filed by the Applicant on appeal would have materially affected the TMOB’s decision with respect to the entitlement grounds of opposition, and therefore conducted a de novo review of this ground. The new evidence was material because it “address[ed] a specific gap identified by the TMOB” in the decision under appeal—in particular, the new evidence specifically addressed the issue of the extent to which pizza boxes bearing the BLAZE Trademark had been used previously in Canada by the Applicant.
In particular, the Court found that this new evidence materially affected relevant factors in the confusion analysis. For instance, the evidence relating to the extent of sales made in association with the Applicant’s pizza boxes materially impacted the consideration of surrounding circumstances involving the Applicant’s trade dress. The pizza boxes displayed a variation of the BLAZE Trademark in which its elements were arranged around the periphery of the box, which gave the FAST FIRE’D component increased prominence. This variation therefore contributed to the overall resemblance in appearance between the parties’ marks.
Notably, the Court did not consider the Applicant’s use of FAST FIRE’D as a standalone trademark, finding that this had not been sufficiently pleaded under the entitlement ground in the Applicant’s Statement of Opposition.
The Court’s decision emphasizes the importance of providing evidence which permits the trier of fact to assess the extent to which a trademark has been used in Canada. Further, it shows that such evidence does not exclusively take the form of sales figures: the Applicant was able to demonstrate that its BLAZE Trademark had become known, and had been used in a particular manner, by showing that it had distributed approximately 830,000 relevant pizza boxes prior to the filing of the Respondent’s trademark.
Prepared by David Bowden, Clark Wilson LLP.