In a recent case Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co., Ltd. and Wiston Building Materials Co., a BC Supreme Court judge granted a court order (injunction) preventing the owner of a registered trademark “WOODPECKER” from using it because this name for many years had been used by that company’s competitor who neglected to register their trademark.
Woodpecker Hardwood Floors have been using the brand since at least 2000, without registering it as a trademark with the Canadian Intellectual Property Office (CIPO).
Lo and behold, in 2011 a competitor, Wiston, a company started in 2009, filed an application for the trademark WOODPECKER with CIPO, which application has matured to a registration in 2013.
Mr. Justice Silverman found that “Having two ‘Woodpeckers’ selling hardwood flooring within a mile of each other in Richmond would seem to run contrary to public interest.” Because Woodpecker Hardwood Floors started using their mark years and years prior to Wiston, the judge recognized that Woodpecker Hardwood Floors had the prior right that trumped Wiston’s right to the registered trademark.
This case has 3 important lessons for Canadian businesses. They are nothing new to trademark lawyers, but this case presents a great example of how poor IP strategy can spell trouble.
So here are the three things to remember:
1. A trademark registration is not a tool to override pre-existing rights of your competitors. Even if you succeed with such registration, it will not be worth much because it can be taken away from you easily and it cannot really be enforced against the competitor anyway.
2. Had Woodpecker Hardwood Floors registered their trademark early, the Canadian Intellectual Property Office would never have registered a confusingly similar trademark for Wiston, so all of this would have been a non-issue to begin with.
3. If the old Woodpecker had registered its trademark, it would have cost at least 10-15 times less compared to having to take Wiston to court over an unnecessary dispute.
I’ve said it many times, if you have developed a valuable brand for your business and you have not registered it as a trademark, you are not being serious about your business. It’s not even about bringing a knife to a gunfight. It’s about bringing a blindfold to a gun fight – simply hoping that somehow things will figure themselves out. Even if they occasionally do, the cost may be prohibitive.
With the Trademark Factory™ offering a unique new way to register trademarks in Canada with a Triple Peace-of-Mind Guarantee, there is really no excuse for neglecting to protect your valuable business assets!
I will be holding a flood of workshops and presentations in the next 30 days.
I thought I’d put them all in one place, here.
October 8, at 11am PST: Branding Your Fitness Business with Velocity Athletic Training Radio
October 17, at 4pm PST: Intellectual Property in Plain English at Capilano University BOSS Entrepreneurship Program
October 21, at 7pm PST: Developing and Protecting Online Brands with Internet Masterminds Group Meetup
October 30, at 11am PST: Terms of Endearment: Contracts for Wedding Professionals at Frame to Finish Expo with Canon
November 2, at 11am PST: Legal Foundations and Intellectual Property at SFU Entrepreneur of the Year Jumpstart program
Looking forward to sharing my passion for intellectual property!
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Tags:CollectivismPhilosophySmall BusinessNew Copyright ActFair Dealing