The claimant submitted an interlocutory application to prohibit the defendant from trading under the name ‘Mariano’s Pizzeria & Restaurant’ on the grounds of passing off and infringement of the registered trademark of the claimant. The claimant was in business for 18 years with 8 outlets in Trinidad and Tobago. Their pizza had been associated with the mark for several years, and they also advertised on the radio, television and in the press for many years.
It was submitted that the mark caused confusion; five or six persons inadvertently purchased pizza from defendant on the belief that it was the claimant. Additionally, deliveries were made to the claimant, as well as an attempt to collect money from the claimant, when in fact the delivery and collection of money should have been with regards to the defendant.
The defendant contended that the claimant failed to established ‘reputation’, which is an element in proving passing off. They secondly claimed that the wrong test was used to determine if the mark was infringed, arguing that the mark to be challenged is that on the Register of marks and not the mark found on the claimant’s pizza box. It was also submitted by the defendant that the claimant had knowledge of the defendant’s plans to enter the pizza business on the basis that the defendant purchased items from the claimant that are commonly used in the preparation of pizza and as such, created an estoppel.
On the claim of passing off, the court had to determine whether the defendant’s use of the name causes or is likely to cause confusion. Whereas for the claim of infringing a mark, the claimant was only required to establish that the offending mark was similar; they did not need to prove that the marks are confusingly similar. The issue is not that the defendant copied the exact mark but instead, that the use of the mark by the defendant was intended to deceive.
The court disagreed with the defendant that the mark to be examined is that which is on the Register of marks and not on the claimant’s pizza box, stating that to limit the examination as such “would be to adopt the blinkered or ostrich approach” (pg. 5). While the court would have preferred to hear the reasons of the five persons who were confused, the court decided that there was sufficient evidence to establish a prima facie case of confusion. No explanation for the use of the name ‘Mariano’s’ was given save for the defendant’s attorney exclaiming “Why not Mariano’s” (pg. 6).
On the question of whether the claimant adequately established ‘reputation’, the court agreed that more evidence could have been submitted but accepted that the information provided to establish reputation was satisfactory at the current interlocutory stage and could be expanded on at the trial.
The court was reluctant to express any views about the similarity of the names or the get-up on the pizza boxes, noting that this should be dealt with by the trial judge. However, the court did decide there was a serious issue to be tried.
Cases referred to:
Lee v Haley (1869-70) 5 L R Ch App 155
American Cyanamid 1975 AC 395
Alfred Dunhill Ltd v Sunoptic SA 1979, FSR 337