ABOUT BRANDS UNDER ATTACK examines how Canada’s accession to the Madrid Protocol will affect brand owners’ ability to obtain or keep their monopoly in the Canadian marketplace.
Madrid Protocol in Canada:
FEUDS OVER FAMILY NAME: WHY A SINGLE OWNER CONSOLIDATION IS A MUST (PART III)
In our third and final commentary on the subject of Feuds over Family Name as a Brand, we revisit Miranda v. Miranda. Brand management like a good lawn requires constant maintenance.
Background
Father and son battled over rights to the family name MIRANDA for their respective window and door installation businesses.
Where the family name is a business brand, its use in a trademark sense may form a basis to prevent competitors from using conflicting trademarks or trade names to try to benefit from the business’ reputation.
Lessons Learned
In the Miranda case, the son was able to retain his rights to the trademark MIRANDA. In addition to using MIRANDA in a trademark sense, the son had also secured a federal trademark registration for it. Furthermore, the son obtained a transfer of another family member’s MIRANDA trademark and trade name rights, thereby consolidating those rights for his own business.
Fighting related family members is not the only feud the family name brands must face. The MIRANDA mark, like any family name brand still faces challenges in 2020 from other companies in the home renovation business. A suivre.
This case illustrates a key business strategy which brand owners must keep in mind in case of brand warfare: When it comes to family names as brands in Canada, from McDonald’s to Birkenstock, there is no room for multiple family branch usage. To remain unique, the family brand must be consolidated with one owner.
In addition to using the brand in a trademark sense, it is also important to take the appropriate legal steps at the appropriate time to confirm and preserve those rights in the brand owner’s name.
About Us
OLLIP P.C. is an intellectual property agency and law firm with offices in Ottawa and Toronto, Canada.
We are the authors of the leading treatise Odutola on Canadian Trademark Practice: Vol. I Prosecution and Vol. II Opposition, Summary Cancellation and Appeals, published by Carswell, a Thomson Reuters Business. This is the only publication, now in its 12th year, which provides strategies and practical advice for managing trademark applications in Canada. Trademark practitioners rely on our publication for solutions to the problems they encounter daily in their practice before the Canadian Trademarks Office.
With our fixed fee approach, for six years in a row we have responded to more Office Actions/Provisional Refusals for trademark owners who manage their own applications than any other firm in Canada.
Editors:
Karen Hansen
Bayo Odutola
OLLIP P.C.
Ottawa Tel.: 613.238.1140 Fax: 613.238.5181
Toronto Tel: 647.496.0313 Fax: 647.496.0315
Disclaimer: This briefing note is not legal or professional advice.
