Would a Rose by Any Other Name Still Smell as Sweet? – The Eternal Trademark Question

Facebook, in another new and creative attempt to set itself apart from its competitors (Twitter and MySpace), now allows users to register their personalized web addresses. Since I have already pontificated in previous posts on the benefits of Facebook and the extent to which Facebook has integrated itself into the lives of not just consumers, but businesses as well, I will attempt to be as concise as possible in my discussion of Facebook.

Since many corporations promote their businesses through Facebook, this registration may end up becoming a trademark nightmare as they trip over themselves to try to get their name registered. Many fear that this could become a severe case of cybersquatting – a term used for those that register a domain name with an intent to profit from the reputation and goodwill of a trademark belonging to someone else. The “cybersquatter” will then arrange to sell the trademark back to the corporation who owns the trademark at an exorbitant amount.

With this trademark imbroglio soon to be upon us, perhaps it is time to look at Canadian trademark law and determine our chances of survival should such a debacle take place. It is clear that one cannot use the same name as a trademarked product, hence fulfilling its purpose of being branded a “trademark”. But how close can you get?

Trademark law suggests that one cannot use an already trademarked name unless the name is utilized for a product in a separate niche of products. Keeping this in mind, any trademark lawyer would advise a newbie to try and obtain “first use” trademark in as any niches as possible. But can using a similar sounding name still be challenged in court?

It seems that the answer to that question is “yes,” as seen in the current case involving the American pop star, Katy Perry. Readers addicted to the ins and outs of celebrity culture will already be familiar with the battle of the Perrys – Katy Perry vs. Katie Perry. Katie Perry – with an “ie”, not to be mistaken for Katy Perry with a “y” – is set to battle the other for the use of the name. In essence, Katie Perry, a Australian fashion designer, has trademarked her clothing brand as “Katie Perry”. Since Katy Perry the pop star has vague intentions to do the same, she is suing Katie Perry for using a “similar name” in connection with the clothing label.

With this baffling situation at hand, we can try and contemplate the courts’ decision were it a Canadian case. There are three cases in Canadian trademark history that can help to resolve this situation and aid in our understanding of trademark law as it stands in Canada: the “Barbie case,” the “Jaguar case,” and most recently the “Scotch Whisky case.”

The “Barbie Case”

2006 was a momentous year in trademark law history, with the resolution of two high profile cases that changed trademark law as we know it – Mattel Inc. v. 3894207 Canada Inc., 2006 SCC 22 (aka Barbie) and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23

Though the name “Barbie” is usually associated with dolls and little girls, a three-outlet chain in Montreal was also named “Barbie,” apparently a name designed after combining “bars” and “barbeque”. After a 13-year battle with Mattel Inc., which owns the trademark on the famous “Barbie” line of children’s dolls, the SCC ruled against Mattel and allowed the restaurant to continue to use the name “Barbie.”

Justice Binnie in Barbie concluded that “notwithstanding the fame of the appellant’s trade-mark, it was satisfied by the respondent that there was no likelihood of confusion in the marketplace having regard to all the surrounding circumstances.” The court upheld the three concurring lower decisions from the Opposition Board in the Trademark Office to the Federal Court Trial Division and finally, the Federal Court of Appeal.

A similar decision in Veuve Clicquot fortified the precedent when courts determined that Les Boutiques Cliquot, a women’s clothing chain, was allowed to use the name even though it sounded similar to the French champagne Veuve Clicquot. Justice Binnie again, sided with the small business, stating that “[w]ithout a link, connection or mental association in the consumer’s mind between the respondents’ display and the Veuve Clicquot mark, there can be no depreciation of the latter.”

The gist of the decision in both cases was that confusion was not shown as being likely to occur and therefore, the names were acceptable “as is” with no infringement.

The “Jaguar Case”

Although the previous cases ruled against the trademark owner, the 2006 case of Remo Imports Ltd. v. Jaguar Canada Ltd., 2006 FC 21 went in a different direction as the SCC this time ruled in favor of trademark owners. In the battle between Jaguar Cars and Jaguar Luggageware, the Federal Court of Canada decided that the luggageware infringed the trademark even though they occupied different niches.

The courts concluded that “[w]hen [a] senior user’s reputation extends beyond its core wares and a newcomer uses senior user’s mark for other wares, the court must focus on whether the newcomer’s activities will damage senior user’s overall reputation, rather than just the class of wares in which senior user currently deals.” This decision afforded broader protection to the reputation and goodwill of well-known trademarks. Does the big guy step over the little guy again?

The “Scotch Whiskey Case”

Finally, we come to Glenora Distillers International Ltd. v. The Scotch Whisky Association, 2009 FCA 16, the latest in a long line of trademark disputes. This case involved a distillery based in Glenville, Cape Breton and its product called Glen Breton Whisky. Scotch Whisky Associated argued that the name “Glen” might confuse whisky drinkers into thinking they are drinking Scotch Whisky.

Although the Trademark Opposition Board sided with the small-town distillery, the Scotch Whisky Association won its appeal to the Federal Court of Canada. The court found that “there was actual confusion in the marketplace, and that some consumers were not aware that Glenora’s product was not a Scotch distilled in Scotland.” The court further concluded that the word “glen” was recognized in Canada as designating Scotch Whisky.

But the little guy may not completely lose hope, as the Federal Court of Appeal overturned the decision in favor of Glen Breton, stating that “[t]he word “glen,” standing alone, has never been used as a trademark in Canada for any product. However, it has been used as a prefix for many trademarks associated with Scotch whisky.” They concluded that the name taken in its entirety was not likely to cause any confusion. Scotch Whisky’s attempt to get leave to appeal this decision has been denied and dismissed with costs by the SCC.

Hope For the Little Guy

Perhaps there is still hope for the little guy in our world. Although Canadian courts have taken varying stands with regard to the position of smaller companies against larger, well–reputed corporations, it is clear that the courts are trending towards decisions that protect smaller companies instead of leaving them high-and-dry. The courts have taken a number of factors into consideration, and have, in my opinion, come to a fair decision keeping the needs of both corporations in mind.

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