Court prohibits use of surname as trademark

In Stenner v ScotiaMcLeod (2007 BCSC 1377, September 14 2007), the Supreme Court of British Columbia has held that the plaintiff's surname was a trademark when used in association with investment and financial services, and that the defendants' use of that name in association with competing services constituted passing off.

The plaintiff, Gordon Stenner, is a well-known investment adviser and financial consultant in Vancouver with his own radio show. Stenner had been offering investment and financial services since 1988. Stenner provided these services through his team - which included his daughter, Vanessa Stenner-Campbell, and her husband, Raymond Campbell - in association with the trademark STENNER. Since 2000, Stenner and his team had worked under contract and as employees of one of the defendants, National Bank Financial.

In 2002 Stenner negotiated unsuccessfully the sale of his book of business to his daughter. Instead, the book of business was sold to another National Bank Financial employee. Spurned in her attempts to purchase her father's book of business (which had been promised to her since 1997), Stenner-Campbell and her husband joined ScotiaMcLeod, a rival investment firm, and began soliciting Stenner's clients. They also started a radio show using the Stenner name (on the same radio station as Stenner-Campbell's father) and advertised their services under the designation 'Stenner/Campbell'. In addition, they appropriated the domain name 'stennerteam.ca', which had been maintained by Stenner-Campbell and used by Stenner and his team while at National Bank Financial.

Stenner commenced an action in 2003 against his daughter, her husband, other members of the former Stenner team, ScotiaMcLeod and National Bank Financial. Among other things, Stenner claimed breach of fiduciary duties owed to him and passing off. Stenner sought, among other relief, an injunction to prevent the defendants from using the mark STENNER in association with INVESTMENT, TEAM or FINANCIAL. Although Stenner successfully secured a trademark registration for STENNER, the application was filed only after the lawsuit had been commenced. Moreover, prior to the matter reaching trial, Stenner-Campbell and her husband separated. Accordingly, since late 2006 she used her birth name, Vanessa Stenner, for business purposes.

With respect to the trademark-related causes of action, the court concluded that the defendants' actions constituted passing off since the defendants' use of the designation 'Stenner/Campbell' in print and radio created confusion, depending on the context and on a person's prior experience with investing or financial services generally. The court found that the defendants:

• were aware of the potential for confusion;
  
  
• knew of the significant association between the mark STENNER and the plaintiff in the financial industry and the community; and
  
  
• appreciated that there was benefit to be derived from use of the name Stenner.

The court issued a permanent injunction with regards to the defendants' use of the domain name 'stennerteam.ca' and required that the domain name be transferred to the plaintiff. However, no injunction was issued regarding the use of the trademark STENNER with INVESTMENT, TEAM or FINANCIAL, since it would have been too broad. The court noted that it would be acceptable, for example, for Vanessa Stenner to use her full given name (ie, Vanessa Stenner) for business purposes.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto