Trademark Squatters have become a huge problem in the last couple of years. The value of a mark in commerce can be immense, but often marks are not registered, with the owner depending upon common law recognition of rights.
Trademark Squatters take advantage of inability of government agencies to check the truthfulness of statements made when a mark is registered, and the lack of sanctions for lying under oath. Most especially the lack of sanctions means that there is no effective action taken against Trademark Squatters.
The Government Agency which supposedly exists to protect the Mark Owner instead protects the Mark Squatter against the Mark Owner. When ownership is finally settled at great cost to the Mark Owner, the Mark Squatter walks away unscathed, with the profits that he or she has accrued from his or her actions, ready to do it all again, against some other unsuspecting Mark Owner.
In all cases I will be working with published information. It is possible that this information may not be up to date, or may not accurately reflect the current status of the situation. If I am supplied documentary evidence which shows a different status, I will publish an update. In cases where a lawsuit ensued, and the settlement was sealed, I will not update the published information, unless I am provided with:
1) A copy of the settlement
2) Permission to publish the settlement
While I realize this may cause problems for one or more of the parties involved, I believe in only publishing things I can reference, so that those who read this have an evidence trail to follow.
Note that the above text will appear in every article, if you’ve read it once, feel free to skip down to the divider.
You wouldn’t figure that the term “Welcome to [insert place name here]” could be trademarked, other than by the place itself. Guess what – you’d be wrong.
A man named Nick Slater managed to trademark the term “Welcome to Parry Sound” in Canada.
Parry Sound is a really nice place. I spent a lot of my youth in the “Near North” or “Cottage Country” as it’s often called. As someone who’s travelled a lot, I still regard it as one of the most beautiful places I’ve ever seen.
I love the north so much, I’ve actually moved there. I live about four hours north of Parry Sound. Yes, it is snowing today. This is normal at this time of year…
Back to the trademark… According to the registration that is online at the Canadian Intellectual Property Office, Slater filed his application on February 8, 2007. The registration was granted on January 28, 2009 to Slater’s company, ZEUTER DEVELOPMENT CORPORATION. Slater is a resident of Parry Sound, and his company address is there.
Here’s the fun part. You can object to a trademark only before it is finalized. Since the Town of Parry Sound was unaware of Slater’s actions, they didn’t object. Once a trademark is finalized, you can’t object. Of course if you didn’t know about the trademark… Catch 22.
Slater claims he has been using the phrase since 1997. I remember hearing the phrase in the late 1960’s. While he may not be lying about his use of the phrase, he isn’t the first to use it. Unfortunately the law doesn’t seem to understand this distinction.
However the trademark should not have been issued in the first place. According to the Justice Department website:
13. (1) A distinguishing guise is registrable only if
(a) it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration; and
(b) the exclusive use by the applicant of the distinguishing guise in association with the wares or services with which it has been used is not likely unreasonably to limit the development of any art or industry.
Marginal note:Effect of registration
(2) No registration of a distinguishing guise interferes with the use of any utilitarian feature embodied in the distinguishing guise.
Marginal note:Not to limit art or industry
(3) The registration of a distinguishing guise may be expunged by the Federal Court on the application of any interested person if the Court decides that the registration has become likely unreasonably to limit the development of any art or industry.R.S., c. T-10, s. 13;
R.S., c. 10(2nd Supp.), s. 64.
Note the bolded part. Since the first two word of the phrase are utilitarian, this Trademark should have never been issued, or at least if it was issued, it should have been issued to the Town itself, not a private citizen.
The Town of Parry Sound has since filed their own trademark application. Exactly how this is going to play out, I don’t know. I do know that I’ve sent emails to several Members of Parliament about updating the Trademark Act.
Thursday November 1, 2012