Federal Court Trademark Victory

Posted byjames on September 3, 2014

We are pleased to announce our recent victory for Magellan Law Group LLP client Urban Distillery Inc. in Federal Court Action T-700-13.

The decision of the Honourable Justice Martineau released September 2, 2014 found that both the City of Terrace and Kitasoo Band Council’s Official Marks for SPIRIT BEAR were invalid, having been improperly registered. In particular Justice Martineau found that the SPIRIT BEAR marks had not been properly adopted, and had not been used as a mark. City of Terrace and Kitasoo Band Council were also ordered to pay costs to Urban Distillery.

City of Terrace and Kitasoo Band Council filed official marks for SPIRIT BEAR in 2003 and 2006 respectively, after which they began to work together to license the mark to businesses and collect royalty payments from businesses.  

Official Marks are a system unique to Canadian Trademark law designed to protect the integrity of Government marks and symbols, such as the Canadian Flag, Crests on the Federal and Provincial Coat of Arms, etc. The rights given to Official Marks are very powerful, but unfortunately there is little examination by the Canadian Intellectual Property Office as to whether the agency claiming the mark is a government agency, and if they have in fact adopted the mark prior to applying for the Official Mark to be published. While for the most part, government agencies have been self-enforcing, opportunities for abuse persist unless the law is changed.

Urban Distillery was approached by the City and Band in 2011 and ordered to rebrand their award winning Spirit Bear Vodka and Gin brands. Facing prohibitive rebranding costs Urban Distillery instead persisted in their defense of non-infringement and after being sued and hiring legal counsel counterclaimed that the marks being asserted were invalid.

While ultimately successful our client faced 4 years of uncertainty and risk with the potential loss of the goodwill acquired in their award winning brands.

In order to avoid situations like this this we highly recommend conducting a trademark clearance search prior to launching most new names or brands, to reduce the chances of collision with other marks that may have earlier registration dates.
For more information regarding this case or a copy of the decision please contact Magellan Law Group LLP Lawyer and Trademark Agent James Wagner who represented Urban Distillery Inc. in this matter at james@magellanlaw.ca


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