Federal Court Of Canada Dismisses Appeal Relating To Trademark Opposition Decision For FORNO MAGNIFICO & DESIGN Mark

On September 1, 2023, the Federal Court of Canada (the Court) in Industries Certico Inc. v Mastrandrea Commercial Bakeries Limited, 2023 FC 1193, dismissed an appeal brought under section 56 of the Trademarks Act (the Act).  The appeal contested the Trademarks Opposition Board’s (TMOB’s) finding that the FORNO MAGNIFICO & DESIGN mark (the Mark) was unregistrable based on a likelihood of confusion with the registered FORNO & DESIGN mark and previously used FORNO CULTURA SQUARE & DESIGN mark.

The Applicant, Les Industries Certico Inc. (Certico), attempted to register the Mark in association with “pizza ovens” and “pizza crusts”.   Mastrandrea Commercial Bakeries Limited (Mastrandrea) opposed registration of the Mark on various grounds, including non-registrability based on confusion with its registered FORNO & DESIGN mark and non-entitlement based on confusion with its FORNO CULTURA SQUARE & DESIGN mark, previously used in Canada.  The TMOB granted the opposition and refused registration of the Mark on the basis of a likelihood of confusion with respect to Mastrandrea’s registered FORNO & DESIGN mark regarding “pizza ovens” (s. 12(1)(d) of the Act), and Mastrandrea’s previously used FORNO CULTURA SQUARE & DESIGN mark in relation to “pizza crusts” (s. 16(1)(a) of the Act).  Certico appealed the TMOB’s decision.

On appeal, Certico filed new evidence which it claimed demonstrated that Mastrandrea had never sold ready-to-use preformed pizza crusts.  The Court determined that this evidence was not significant for several reasons, including because it related to non-sale of “ready-to-use preformed pizza crusts”, which Mastrandrea had never claimed to sell, and not to the relevant goods, pizza and pizza dough, actually sold by Mastrandrea.

Thus, given that the new evidence was considered immaterial, the Court determined that the applicable standard of review was the appellate standard of palpable and overriding error.  In applying this standard, the Court ruled that it was unable to qualify any alleged errors submitted by Certico to be palpable and overriding errors committed by the TMOB in its analysis of the test for confusion in accordance with the Act.  Specifically, the Court found Certico’s arguments to be largely repetitive of the arguments made before the TMOB and was not convinced that the TMOB made a palpable and overriding error in its confusion analysis.  Therefore, the Court dismissed the appeal without costs.

Summary By: Victoria Di Felice