Trade-Mark Registration Not All Singing And All Dancing

In Domaines Pinnacle Inc. v. Constellation Brands Inc. 2016 FCA 302, the Canadian Federal Court of Appeal has distinguished its own recent decision in Les Restaurants La Pizzaiolle Inc. v. Pizzaiolo Restaurants Inc., (Pizzaiolo) 2016 FCA 265 (see IP Monitor of November 2016.)

Both cases dealt with the extent to which Canada's Trademark Opposition Board (the Board) was required to consider all possible uses of a registration in determining the issue of confusion. In the Pizzaiolo case the Court of Appeal had considered that the Board had erred in its confusion analysis by not considering the possibility of the use of LA PIZZAIOLO mark in an oval and without the formative "LA." In Pinnacle, the Court of Appeal considered that the Board had not unreasonably concluded that there was no risk of confusion, notwithstanding the possible uses of the PINNACLES mark within the scope of the registration.