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 THE FAMILY NAME: WHY SHARING IN THE FAMILY IS NOT GOOD (PART II)
The famous Canadian children’s author Robert Munsch wrote “This is kindergarten! In kindergarten, we share! We share everything!” Families, like children in kindergarten, proudly share, share their names. However, sharing the family name as a brand with family members is the antithesis of branding.
In last month’s issue as part of Brand Family Feuds series, we discussed the importance of ensuring that a family name adopted as a business brand be used in a way which makes it a brand. This month we look the case of CIBC v Stenner which illustrates another key issue family businesses must keep in mind when claiming a family name as a brand.
Various family members used their family name STENNER as a brand to identify their respective financial services businesses. The father registered STENNER as a trademark.
The son succeeded in having the father’s trademark registration cancelled. With the cancellation, the father lost the accompanying means to prevent others from using a conflicting trademark or trade name in Canada.
The father lost because the variation of the mark he was using did not support the registration. In addition, STENNER did not distinguish the father’s financial services from STENNER branded financial services provided by other businesses, a cardinal requirement for maintaining trademark rights in Canada.
This case illustrates a key business strategy which family owned businesses must keep in mind when relying on a family name as a brand: To benefit from a family name as a brand, care must be taken to maintain the rights by proper ongoing usage and by defending those rights as necessary under trademark law. Otherwise, the mark can become available to anyone else to use.
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.
Disclaimer: This briefing note is not legal or professional advice.