Federal Court expunges registration for surname in family feud

Canada
In CIBC World Markets Inc v Stenner Financial Services Ltd (2010 FC 397, April 13 2010), the Federal Court of Canada has cancelled a trademark registration after finding that the mark at issue was primarily merely a surname and that the registered owner was not using it as a trademark. 

Gordon Stenner is the sole shareholder of Stenner Financial Services Ltd (SFS), and a well-known investment advisor and financial consultant in Vancouver with his own radio show. Gordon Stenner has been offering investment and financial services since 1988 through his team, which, at various times, included his son, Thane Stenner, his daughter, Vanessa Stenner-Campbell, and her husband, Raymond Campbell. 

In 2003 Gordon Stenner filed an application to register STENNER as a trademark. That application was initially refused by the Canadian Intellectual Property Office (CIPO) because the proposed mark was considered to be primarily merely a surname, the registration of which was prohibited by the Canadian Trademarks Act

Pursuant to the act, a trademark is not registrable if it is primarily merely the name or surname of an individual living, or who has died, in the preceding 30 years. An exception to the general prohibition is available if an applicant can demonstrate that the word has become distinctive as at the filing date of the application. In response to the objection received from CIPO, Gordon Stenner filed evidence to establish that the trademark had been used in Canada by SFS and had acquired distinctiveness. CIPO accepted that evidence and a trademark registration for STENNER issued in May 2005.

Although Thane Stenner had begun his career working for his father, he eventually left his father’s employ and set out to “make a name for himself”, and has used his last name in his business advertising. Both Thane and his former employer, CIBC World Market Inc, received letters threatening litigation for trademark infringement and passing off related to their use of STENNER. In response, both parties brought applications to expunge the registration for STENNER in 2007.

The two applications were heard together and the Federal Court issued a single judgment expunging the registration for STENNER.

The central issue in the applications was whether STENNER was registrable at the time the application was filed. Thane Stenner and CIBC argued that STENNER was not distinctive at the time of the filing of the application, relying on the extensive use of STENNER by Thane and Vanessa Stenner. Further, Thane Stenner and CIBC supplied expert evidence, in the form of a survey, that STENNER had virtually no recognition outside of Vancouver, Gordon Stenner’s home town. 

The evidence also indicated that Gordon Stenner had always used STENNER in association with other words, such as 'group' and 'team'. Based on this evidence, the court concluded that, at the time of application, neither Gordon Stenner nor his company was using the trademark STENNER. The court also concluded that, even if STENNER was distinctive at the time of registration, it had lost its distinctiveness due to the concurrent use of STENNER by both Vanessa and Thane Stenner. As a result, the court cancelled the registration.

Interestingly, the application judge seemed prepared to entertain an attack on the registration on the basis that it was obtained by misrepresentation, a ground which is not specifically listed in the Trademarks Act as a basis for attacking validity, but which has been recognized in some cases where a false date of first use was used in an application or a false declaration of use was submitted. In this case, it was alleged that the affidavit that Gordon Stenner had submitted to CIPO in order to secure the registration contained false statements concerning his company's use of the mark. However, the judge dismissed this validity attack, because neither Thane Stenner, nor CIBC filed a complete copy of the affidavit (including exhibits) in the court record.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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