Wednesday, February 6, 2013

On the importance of record-keeping when building your brand

Wednesday, February 06, 2013

Avocats Sans Frontières is an international NGO whose mandate relates to serving vulnerable people waiting for justice, ensuring access to justice and helping to establish legal systems that are capable of protecting these people. The first of these organizations was founded in Belgium in 1992. It has acted, among many other projects, to ensure a fair trial and a proper defense of those accused of perpetrating the 1994 genocide in Rwanda. Avocats Sans Frontières Québec is an independent organization founded in 2002 to contribute to international solidarity efforts of other Avocats Sans Frontières groups.

Lawyers Without Borders, Inc., a non-profit corporation based in Hartford, Connecticut, was founded in January 2000 and obtained trademark registrations for "Lawyers Without Borders" in the United Kingdom, Canada, Israel, New Zealand, Australia and the United States. Lawyers Without Borders, Inc.’s work is generally in the fields of trial advocacy training, neutral trial observation, community education and outreach, research and technical assistance. Lawyers Without Borders, Inc. disclaims any relationship with Avocats Sans Frontières.

In the spring of 2008, Avocats Sans Frontières Québec (ASFQ) applied to register three trade-marks, “Avocats Sans Frontières”, “Lawyers Without Borders” and “ASF”, on the basis of prior use in Canada dating back as far as 2002.

In 2009, two of the applications, “Avocats Sans Frontières” and “Lawyers Without Borders” (the Marks), met a snag - a 2005 trademark registration by Lawyers Without Borders, Inc. (LWOB Inc.) for “Lawyers Without Borders” claiming use in association with legal services dating back to 2001.

ASFQ instituted administrative section 45 summary expungement proceedings against LWOB Inc.’s mark “Lawyers Without Boarders” on the grounds of non-use and, in particular, that the use of the LWOB registered trade-mark was not in association with “legal services”. The Trademark Opposition Board (TMOB) found that the evidence submitted by LWOB Inc. - pertaining to coordinating of legal services - was sufficient to count as use of the mark in association with “legal services”.

Before that decision of the TMOB was made, ASFQ had filed an application before the Federal Court to challenge LWOB’s mark more formally. While section 45 summary expungement proceedings are quite limited in scope, an application under section 57 of the Trademarks Act allowed the ASFQ to challenge the validity of LWOB Inc.’s registration on the bases that:
  • as at the date these proceedings began, the trade-mark was not distinctive of its owner LWOB Inc. but was rather distinctive of ASFQ’s activities; 
  • at the time LWOB Inc. applied for the mark, ASFQ, rather than LWOB Inc., was the person entitled to secure its registration in Canada - the question here becomes: who first used the Marks in Canada; and others.

On January 14, 2013, Justice Lemieux of the Federal Court ruled that ASFQ had successfully established that the marks were indeed distinctive of ASFQ’s activities and that LWOB Inc. had not been the person entitled to secure the registration of the marks in 2003.

The grounds for this decision are some of the fundamental principles of our legal system – credibility and evidence. ASFQ was able to submit uncontroverted evidence that overwhelmingly and clearly established its use of the Marks across Canada prior to the 2003 trademark application by LWOB Inc. The evidence submitted in support of LWOB Inc.’s position was characterised by the court as providing contradictory evidence in separate affidavits relating to LWOB Inc.’s date of first use and a number of other issues. The evidence in these affidavits was further impugned by subsequent affidavits submitted by ASFQ and the affiant, the founder of LWOB Inc., could not provide certain details in respect of questions asked - relying on documents which she had reviewed but never produced.

This decision shows the importance of record keeping – especially when a company is in its infancy and one is just starting to build a brand. When any start-up or new brand is being launched, it is critical to retain records of the earliest sales or use – dated invoices bearing the new brand name, press releases, time-stamped photographs of new displays, invoices from advertising agencies. Trademark rights are acquired and maintained by use – but being able to substantiate claims of first use is where you will be able to fend off attacks by others.

By: Philip Oliver