In a recent decision, the Federal Court of Canada allowed an appeal of a Trademark Opposition Board (TMOB) decision and refused an application to register FAST FIRED BY CARBONE & Design Mark (Carbone Mark). The Court found that the new evidence Blaze Pizza, LLC (Blaze) provided on appeal addressed the gaps in the prior evidence identified in the TMOB’s decision, establishing a reasonable likelihood of confusion.
Blaze opposed the application for the Carbone Mark on various grounds. Most of the grounds effectively amounted to whether there was a reasonable likelihood of confusion between the Carbone Mark and the FAST FIRE’D BLAZE PIZZA & Design Mark (Blaze Mark), including variations of that mark. In particular, Blaze’s allegations focus on the variation of the Blaze Mark that appears on its pizza boxes (Pizza Box Mark).
The TMOB found that there was no reasonable likelihood of confusion between the Carbone Mark and the Blaze Mark, largely based on the degree of resemblance factor. The TMOB found that the word “BLAZE” in the Blaze Mark and the words “BY CARBONE” in the Carbone Mark suggested different ideas. While the TMOB did consider the Pizza Box Mark, it ultimately disregarded it due to a lack of evidence regarding the distribution of Blaze's pizza boxes in Canada.
Blaze appealed the TMOB’s decision and filed new evidence on appeal, including the distribution figures for Blaze’s pizza boxes in Canada. The Court found this evidence to be material, since it addressed a specific gap in the evidence before the TMOB. The Court conducted a de novo review of the aspects of the TMOB’s decision that this new evidence pertained to. Counsel for Carbone Restaurant Group Ltd. (Carbone) did not participate in the appeal.
The Court found that Carbone was not entitled to the apply for the Carbone Mark because there was a reasonable likelihood of confusion between that mark and the Blaze Mark as it appears in the Pizza Box Mark. The Court found that the degree of resemblance factor favoured Blaze. The Pizza Box Mark variant prominently features the words "FAST FIRE'D" and displays a circular flame design to the left of those words, contributing to the overall resemblance between the marks.
In reviewing the evidence, the Court found that the extent to which the marks had become known favoured Blaze. Specifically, Blaze’s evidence showed that 1.73 million pizza boxes featuring the Pizza Box Mark had circulated in Canada between 2015 and January 28, 2019, with approximately 830,000 pizza boxes sold between 2015 and the application date. Weighing all the factors in view of the new evidence, the Court found that on balance there was a likelihood of confusion between the marks.
Similarly, the Court concluded that the Carbone Mark is not distinctive. Blaze's new evidence showed that the Pizza Box Mark variant, and its use of "FAST FIRE'D" alone, had sufficient reputation to displace any distinctiveness of the Carbone Mark. The relevant date for assessing distinctiveness is the date of the opposition statement, which is January 28, 2019. All 1.73 million pizza boxes were relevant to this ground of opposition, demonstrating significant reputation.
Given that the appeal was undefended, the Court awarded Blaze $15,000 in costs based on the upper Column III of Tariff B. Carbone has until December 6, 2024, to appeal.
This decision is Blaze Pizza, LLC v Carbone Restaurant Group Ltd, 2024 FC 1770.
