Business Names Conflicting with Trademarks

Federal Cases: Business Names Conflicting with Trademarks

• Business names may be registered as a sole-proprietorship, partnership, corporation name, or a trade name owned by a corporation.
• If a business name is used as a trademark, then that use confers on the owner the rights to that mark, including the exclusive right to use that mark and to register it, if it is distinctive.
• Whoever first registers a trademark for their trade name has the upper hand.
• Here are some litigious business name cases that have cost business owners many thousands of dollars. Arguing in court over who has priority to a name is very expensive. Cases often cost more than $100,000 for each side.

DIVINE HARDWOOD FLOORING LTD. v. DIVINE FLOORING INC., ET AL  Browse T-777-16

FLATIRON BUILDING GROUP INC v. FLATIRON CONSTRUCTION GROUP Browse T-890-16

Hertz System Inc v Herc Equipment Rentals Inc. T-409-16

• HERC EQUIPMENT RENTALS INC. ON-1389811 Incorporated on 2000-01-24 Active
• Hertz System announced that it would change its name to Herc Rentals in March 2014
• In March 2014, HERTZ announced its plan to make its equipment rental business a stand-alone business (from its vehicle rental business) and further announced that this stand-alone business would be known as Herc Rentals.

Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27

MILANO PIZZA LTD V. MILANO CITY PIZZA LTD T-43-16

RE/MAX, LLC v. PROPERTY MAX REALTY INC. AND OTHERS T-545-16

Time Development Group Inc. v. Times Group Corporation:

• Plaintiff registered its corporate name as a trademark, Times Group Corporation
• The Federal Court framed the main issue as one of confusion: Was confusion likely between the registered trademark, TIMES GROUP CORPORATION, and the tradename, TIME DEVELOPMENT GROUP?
• [13] With respect to TDG’s second argument, TDG points to Times’ trade-mark application in which Times asserted that it began using its mark in 2011. TDG began using its trade-name in 2008. TDG says that its prior use of an allegedly confusing trade-name should have disentitled Times from registering its mark. This is incorrect. It is the use of a trade-mark that confers on the owner the rights to that mark, including the exclusive right to use that mark and to register it. (Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 at para 35-36; Trade-marks Act, s 16). The evidence set out below shows that Times has used its trade-names and mark at least since 2006: this is both before TDG began using its trade-name and well before Times’ registration of its mark in 2014. Therefore, in my view, Times clearly had the right to register its mark and to acquire the exclusive right to use it; the real question is whether TDG should be prevented from using its trade-names on grounds of confusion.
• In 2016 FC 1075, the Federal Court declared that the registered trademark had been infringed and ordered that the appellants refrain from using “its trade-names and any confusingly similar variants.”
• Decision upheld on appeal 2017 FCA 125 (Justice Dawson; Justice de Montigny; Justice Woods)

U-HAUL INTERNATIONAL INC v. U BOX IT INC A-3-16 appeal from 2015 FC 1345 in T-2448-14

WESTERN DRIVING ACADEMY OF LONDON INC. v. WESTERN CITY DRIVING SCHOOL INC. T-700-16