PIZZA AND CHICKEN: DIFFERENT ENOUGH TO AVOID

PIZZA AND CHICKEN: DIFFERENT ENOUGH TO AVOID THE RISK OF CONFUSION
FEDERAL COURT OF CANADA RULES
By
Stella Syrianos
LEGER ROBIC RICHARD, Lawyers
ROBIC, Patent & Trademark Agents
Centre CDP Capital
1001 Square-Victoria - Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel.: (514) 987 6242 - Fax: (514) 845 7874
www.robic.ca - [email protected]
In an application for the expungement of the trade-marks BOSTON CHICKEN
and BOSTON CHICKEN Design, the Federal Court of Canada recently ruled
that in assessing the risk of confusion in respect of descriptive marks, thirdparty use of common elements to a trade-mark is a highly relevant factor
(Boston Pizza International Inc. vs. Boston Chicken Inc. T-677-95, September
17th, 2001, Nadon, J.).
Background. The Applicant. Boston Pizza International Inc. is the owner of
numerous trade-marks in Canada, including the trade-mark BOSTON PIZZA,
registration no. TMA 171,428, registered on September 18, 1970 in association
with the following wares and services: “Pizza and spaghetti, both in hot and
frozen form, as well as the ingredients, in combination, for making these
dishes, restaurant services and the franchising of restaurant services”. As of
1994, there were 93 Boston Pizza restaurants located in five Canadian
provinces.
The Respondent. Boston Chicken Inc. is the owner of Canadian trade-mark
registration number TMA 398,700 for the trade-mark BOSTON CHICKEN and
registration number TMA 396,282 for the trade-mark BOSTON CHICKEN Design.
The respondent's trade-marks were registered on May 29, 1992 and March 27,
1992 respectively in association with the following services:
“take-out
restaurant and catering services”. At the end of 1994, 530 restaurants in the
United States operated under the banner of BOSTON CHICKEN. In Canada,
the evidence demonstrated that the respondent commenced use of its
trade-mark BOSTON CHICKEN in Canada by performing catering services in
Windsor, Ontario.
The facts. The applicant,
(hereinafter "BPI"), sought to expunge the
respondent’s (hereinafter: “BCI”) trade-marks BOSTON CHICKEN and BOSTON
CHICKEN Design on the grounds that they are invalid since they were not
distinctive of the services of BCI, they were not registrable because they were
confusing with BPI’s BOSTON PIZZA trade-mark and because BCI was not the
person entitled to secure registration of its marks as they were confusing with
BPI’s marks previously used in Canada.
The expungement proceeding and the issue of confusion. It is trite law that in
expungement proceedings, the burden of proving the likelihood of confusion
rests on the applicant BPI. In support of its pretensions, BPI alleged that in light
of its long standing use of its trade-mark BOSTON PIZZA, it had acquired
distinctiveness in connection with a chain of franchise restaurants and was
worthy of protection despite its non-inherently distinctive nature. The Court
agreed.
It is worth noting that the Court only proceeded to determine the risk of
confusion between the word marks BOSTON PIZZA and BOSTON CHICKEN,
having quickly disposed of the issue of confusion between the mark BOSTON
PIZZA and BOSTON CHICKEN Design, the Court ruling that there was no
confusion between the latter two marks.
Turning now to the risk of confusion between BOSTON PIZZA and BOSTON
CHICKEN, the Court reiterated that when determining the risk of confusion in
cases where one is faced with descriptive marks, small differences suffice
between the marks at issue to diminish the likelihood of confusion. The Court
also stated that where a party adopts a descriptive mark, it must accept that
a certain amount of confusion may arise.
In support of its pretensions, BCI submitted considerable evidence of thirdparty use of trade names/marks containing the word “BOSTON” within the
restaurant industry. Under such circumstances, BCI alleged that the lack of
evidence of confusion from BPI allowed for a reasonable inference that such
third-party use demonstrates that Canadian consumers are so accustomed
to seeing the word “BOSTON” that they would not look to this term but rather
to the words “PIZZA” and “CHICKEN” to distinguish the marks at issue.
The Court espoused BCI’s claims. In doing so, it is interesting to note that it
referred to a case rendered in the United States by the Trademark Trial and
Appeal Board in Re Broadway Chicken, Inc., Serial No. 74/326,626. The issue
before the TTAB was very similar to the issue before the Federal Court: was the
applicant’s trade-mark BROADWAY CHICKEN confusing with the registered
trade-mark BROADWAY PIZZA for restaurant services and BROADWAY BAR &
PIZZA for restaurant and bar services?
The TTAB held that there was no likelihood of confusion because of the
evidence of widespread third-party use, in a particular field (i.e. that of
restaurant/eating places) of marks containing a shared term (i.e.
“BROADWAY”); such evidence allowing to suggest that purchasers have
been conditioned to look to the other elements of marks as a means of
distinguishing the source of goods or services in the relevant field.
The above-mentioned principles relating to descriptive marks coupled with
evidence of third-party use of the common term “BOSTON” proved to be a
crucial factor in the Court’s finding that Canadian consumers would pay
more attention to the other features of the marks at issue and would
distinguish between them by those other features, in the present case, the
words “CHICKEN” and “PIZZA”.
The Court’s ruling in favour of BCI
demonstrates the importance of surrounding circumstances which may
influence its decisions. The present case also serves as a reminder to trademark owners that their adoption of descriptive trade-marks is done at their
own risk.
Published at (2001), 15-12 W.I.P.R. 4-5 under the title Names of "Boston"
Chicken, Pizza Are Not Similar Enough to Confuse.
© LEGER ROBIC RICHARD / ROBIC, 2001.
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