In the wake of the Liberals unveiling of their new carbon tax plan, “A Green Shift for Canada”, Liberals were confronted by an 8.5 million dollar trademark lawsuit. The plaintiff company, “Green shift Inc” was trademarked in 2003 and provides services to help companies adopt environmentally friendly policies and practices. This suit was recently settled with the defendants agreeing to license the name from the ﬁrm.
The parties however, still disagree as to the legality of the issue. The defendant Liberals argue that there was no legal issue with using the name because their party is not a commercial entity and the name, “Green Shift” describes an environmental policy. In addition, they argue that “Green Shift” has become synonymous with bold environmental policy throughout the world. The Plaintiff company begs to differ, arguing that the fact the Liberal party caused confusion contrary to trademark law is enough to warrant legal action.
This leads to the question of whether confusion is enough. The act does afford protection to those who are victims of trademark confusion. Section 7(b) of the act explicitly provides a prohibition against this. A strict application of the act would support the Plaintiffʼs position that confusion is enough, but as the defendants point out it seems that there is more to the story.
There are three key issues at stake here. First, there is the issue of whether the defendants should be prohibited usage of “Green Shift” even though they are a non- commercial entity and as such, do not offer any services. The act is meant to protect the confusion between services, and so what happens in a situation such as this, where some of the purposes the act is meant to protect are nonexistent?
Secondly, confusion must still be subjected to the legislative test set out in s. 6(5), the primary factor being whether there is inherent distinctiveness in the trademarked name, but where is the distinctiveness if Liberals are correct and “Green Shift” has become synonymous with bold environmental policy? And since the Plaintiff company was only trademarked in 2003, is it truly realistic that a “Green shift” ideology was not in existence before then?
Finally, what should we do when an idea becomes so common that it transcends into our everyday language, but at the same time is trademarked? A possible solution would be to give rights to the trademark holder as per a strict application of the act. It seems however, that there is something more at stake. The act provides a living example of the tension that is existent between two primary stakeholders; the user and the trademark holder. Giving rights to the latter is deﬁnitely taking something away from the former. This case is demonstrative of the all together too usual case in which that which is part of our everyday language is taken away via trademark. I am left wondering whether this is the solution that we wanted, and why are we being forced to license that which is rightfully ours.