A. INTRODUCTION
Two recently publicized intellectual property disputes
illustrate the risks associated with the infringement of another
organization’s registered trade-mark rights. These disputes highlight the
potential consequences of using registered trade-marks belonging to another
organization without a license to do so, even where no bad faith was intended.
B. CARIBANA ARTS GROUP
The first dispute involves Toronto’s annual Caribana
festival. In 2009 the massively popular summer festival was attended by 1.2
million people, and generated approximately $483 million for the Ontario
economy. Several major newspapers recently reported that on May 12, 2011, the
Festival Management Committee, which currently controls the event, was told by
a judge of the Ontario Superior Court that it may no longer use the name
Caribana, because the name is a registered trade-mark belonging to another
organization.
The Caribana festival was started in Toronto in 1967 by
Caribana Arts Group (which at the time was named the Caribbean Cultural
Committee). Caribana Arts Group was the organizer of the festival until 2006,
when the City of Toronto and the Province of Ontario cut funding for the
festival due to Caribana arts Group failing to produce adequate financial
statements.
As a result, the Festival Management Committee became the organizer of the
festival. However, despite the change in control and ownership of the event
itself, the name Caribana remained a registered trade-mark of Caribana Arts Group, which provides Caribana Arts Group with the exclusive
right to the use of the name across Canada. Since coming under the control of
the Festival Management Committee, the festival has been officially named the
Toronto Caribbean Carnival, but has continued to be known and advertised itself
as Caribana. Since the Court’s decision, however, the Festival Management
Committee must now cease all use of the name Caribana.
The decision serves as a warning to charities and
not-for-profits of the strict approach that the courts will take with regard to
trade-mark and intellectual property rights. For many charities and
not-for-profits, the organization’s name and brand are the most important
assets it owns with regard to attracting donors and supporters. As such, the
sudden removal of a name or brand may have devastating consequences. Charities
and not-for-profits should therefore ensure proper ownership of all names,
slogans, logos or other trade-marks which they use, and proactive steps, such
as trade-mark searching and trade-mark registration, should be taken to avoid ending
up in a situation such as that of the Festival Management Committee in the
Caribana case.
C. THE NATIONAL HOCKEY LEAGUE
The second dispute appears at first to be a much more innocuous
case of trade-mark infringement. However, the seriousness of the consequences which
may occur serves as a warning to organizations that are alleged to infringe on
another’s trade-marks with no ill will, believing the display of
another’s trade-mark to be a good faith show of support.
This situation, recently reported on by several major Canadian
news agencies, concerns the owner of a small Lebanese restaurant in Montreal who had until
recently displayed a banner displaying the Montreal Canadiens logo outside his restaurant, along with a slogan which read “Go Habs Go.”
The owner received a cease and desist letter from a NHL lawyer alleging
infringement of the Montreal Canadiens intellectual
property rights, demanding payment of $89,000.00, or $1000.00 for each day the
trade-marks were displayed.
The restaurant owner’s alleged infringement may well
have been intended as a good willed gesture to support the NHL franchise. However,
the display of another organization’s trade-marks without a license to do
so was considered by the NHL franchise to be an infringement of that
organization’s intellectual property rights. A dispute such as this serves
as a warning that trade-mark infringement by smaller organizations, even if intended
as a good will gesture, can expose the organization to liability if the trade-mark
use is not properly licensed by the registered trade-mark owner.
D. CONCLUSION
Charities and not-for-profit organizations
need to take proactive steps to ensure that they have the legal rights to any
name, logo, slogan, or other trade-mark which is used in association with their
wares or services. Where trade-marks are known to belong to another
organization, a proper licensing agreement from that organization should be set
out in writing. Where a trade-mark is part of an organization’s own
branding, the organization should take steps to protect the trade-mark through a
trade-mark search and trade-mark registration with the Canadian Intellectual
Property Office. For more information on the importance of trade-mark
protection for charities and not for profit organizations, see Avoid Wasting
Assets II: Trade-mark and Domain Name Protection for Charities, at http://www.carters.ca/pub/article/charity/2004/tsc0414.pdf,
and Trade-mark and Domain Name Protection Primer for Charities, available
online at http://www.carters.ca/pub/bulletin/charity/2004/chylb43-04.pdf.