MIRANDA stays on register in father and son dispute

In Miranda Aluminum Inc v Miranda Windows & Doors Inc ([2009] FCJ 841, June 26 2009), the Federal Court of Canada has dismissed an application for expungement of two registered trademarks on the grounds that they lacked distinctive character.

The dispute involved use of the surname Miranda as a trademark in association with selling and installing aluminium products, such as windows and doors. The applicant, Miranda Aluminum Inc, was owned by Anthony Miranda and the respondent, Miranda Windows & Doors Inc, was owned by his son, Tony Miranda.

The name Miranda was first used by John Miranda, Anthony's brother, in 1970 in association with the manufacturing and sale of aluminium products. Anthony Miranda first incorporated his company in 1976 and carried on business as Miranda Aluminum, which was abandoned when he was imprisoned in 1988 for drug trafficking. While he was serving time in prison, his son incorporated his first company, TM Renovations Inc, and registered Miranda Aluminum and Vinyl Products as trade names.

On release from prison in 1990, Anthony Miranda worked as a commissioned salesman for his son’s company, while continuing to build his own business, Miranda Home Improvements, which he incorporated in 1994. In 1998 Anthony transferred Miranda Home Improvements to his other son, Edward Miranda, and continued to work sporadically for Tony until 2000, when he incorporated Miranda Aluminum. Meanwhile, in 2004 Tony’s holding company, TM Renovations, was dissolved, unbeknown to him. He carried on business as usual. When Tony realized that his company had been dissolved, John assigned all the rights that he held in the name Miranda to Tony, nunc pro tunc to 1990, prior to the dissolution of Tony's company.

In 2007 Tony registered the trademarks MIRANDA and MIRANDA (and design). Anthony applied to have the trademarks expunged pursuant to Section 57 of the Trademarks Act.

The court had to address several issues, including:

was the name Miranda primarily merely a surname?
if Tony Miranda had acquired distinctiveness in the name, who used the name first in Canada: Anthony, Tony or John?

In particular, Anthony Miranda claimed that his son Tony had used the name Miranda in such a way as to suggest falsely a connection with him. Moreover, Anthony claimed that his son’s use of the name Miranda was not capable of distinguishing his services from the services offered by himself and/or his brother John.

Tony Miranda established that he had acquired distinctiveness in the name Miranda through extensive use. Therefore, the name Miranda was registrable. The court also concluded that Anthony had failed to establish that his son had used the name Miranda in such a way as to suggest falsely a connection with him, especially since:

Anthony's imprisonment was publicized; and
as of Tony’s adopted use date, Anthony was working for him.

Furthermore, it was found that Anthony had abandoned his rights in the name Miranda not only once but twice: when he was imprisoned in 1988 and again when he transferred his second company to his son Edward in 2000. Anthony's evidence of use of the name proved to be variations of his son’s and brother’s use of the name Miranda. Therefore, such evidence was not credible and could not be relied upon to support Anthony's claims of non-distinctiveness.

The court thus dismissed the application for expungement and awarded costs to Tony Miranda.

Jennifer Powell, Fasken Martineau DuMoulin LLP, Vancouver

MIRANDA stays on register in father and son dispute

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