No protection for a HERO

The Canadian Trademarks Opposition Board has decided (in a decision dated July 24 2006) that the use of the word 'HERO' as a small element of a much larger design mark does not constitute use of the mark HERO, despite nearly a century of use of the design mark in Canada.

On October 19 1999 a predecessor of Player's Company Inc (PCI) filed an application to register the word mark HERO based upon use of the mark in Canada since as early as 1900 in association with manufactured tobacco products. The opponent, NV Sumatra Tobacco Trading Company, opposed given its own application for a mark including the word HERO for use in association with tobacco products.

PCI's evidence showed very significant use beginning early in the 20th century of a 'sailor' logo in various forms. This logo was itself a part of various other marks and appeared in advertising. The sailor's hat bore the word 'HERO', which was (i) not always visible in full, and (ii) always a very small component of the design mark as a whole.

NV Sumatra took the position that PCI had not used the word mark HERO at all as a separate trademark, and additionally had not shown such use of the logo since the claimed date of first use, namely, 1900. The Opposition Board upheld this argument, stating that NV Sumatra met its initial burden to prove such lack of use by referring to evidence filed in previous proceedings, which was verified by PCI in this opposition. Secondly, the board found that the word 'HERO' never had any independent identity separate from the logo, of which it formed an insignificant part. It concluded that the word 'HERO' was of so little importance to the logo that if it were deleted, the change would be insubstantial, and the logo would retain its character and be recognizable.

PCI has not filed an appeal.

The decision shows that the mere fact that a word is used over a long period of time as part of a larger mark does not entitle it to be separately registered if it does not function independently as a trademark. Volume of use of the larger mark is not sufficient to overcome the requirement of individual use of the claimed element as a mark.

Gordon J Zimmerman, Borden Ladner Gervais LLP, Toronto