First, Little Brown Box Pizza was not able to prove it had used the PIEOLOGY mark in relation to food services, and therefore the opposition proceeded only based on the food products in the mark (for which Rashid Ray did not challenge use).

Comparisons of marks

Each mark would be seen as a food product followed by the suffix “OLOGY”. Visually and aurally these are similar. Consideration was given as to whether UK consumers would understand that PIE in the PIEOLOGY mark would be a reference to PIZZA (as the opponent’s business is a pizza restaurant). The hearing officer was not convinced that UK consumers would understand this, despite the popularity of “The Godfather” films and the song “That’s Amore”.

Conceptually OLOGY is a reference to science (in this case, the creation of pizza). The hearing officer found that the earlier mark would bring to mind the science behind the creation of pies and the application the science behind the creation of pizzas. So, there was held to be a medium degree of conceptual similarity.

Comparison of goods and services

The hearing officer conducted a relatively forensic assessment of the similarity between the food products in the earlier registration and food services in the application. It was found that the standard “restaurant type” services were similar to pizzas to a medium degree and that food preparation services were similar to a low degree.

There was a distinction with restaurant services in that “food preparation” in this context was really the provision of sliced vegetables for a restaurant to use on its pizzas. “Food sculpting” services means the artistic crafting of food, and this was therefore held to be not similar to food products: the purpose is aesthetic, not to satisfy hunger.

Contract foods services are catering to businesses, and the trade channels may overlap with food services, so these were held to be similar but only to a low degree.

Conclusions

All services (other than food sculpting) were held to be similar to a low or medium degree to food products. However, there was no likelihood of direct confusion: UK consumers would not assume that a pie maker has opened a pizza restaurant. For the restaurant-type services and contract foods services, it was held that “at most the earlier mark might be called to mind, but that is mere association, not confusion”. In relation to food preparation, however, it would be a logical brand extension for a business selling fruit and vegetables to branch into the sale of prepared food products. Therefore, there was a likelihood of direct confusion.

Overall, the opposition failed, other than in relation to food preparation.

Takeaways

On the face of it, this is a somewhat unsatisfactory decision. It would quite possibly have been different had the opponent been able to prove use of its mark (or indeed if the applicant had challenged the opponent to prove use of the prior mark in its entirety). The overly forensic assessment of the services within the application is somewhat artificial. This decision may serve as a helpful guide in relation to the UKIPO’s different approach to such comparisons in the future.

It does not seem that the hearing officer was presented with much evidence of use of the suffix OLOGY in the market. In the absence of significant use it is not clear why PIZZOLOGY would not be a natural brand extension of PIEOLOGY (especially in the UK where consumers do not routinely describe pizzas as pies). It is interesting to see another decision in which a finding that there may be “mere association” was not enough to succeed. Given that a likelihood of association is specifically noted in the statute as enough to succeed on a s.5(2)(b) opposition, perhaps a different choice of phrase would have been helpful here.