Last week the Globe & Mail put out an article on a recent trademark registration that raised the ire of many in the art market. It seems like this issue has now been resolved as the Trademark holders have recently stated that they are willing to expunge the mark and consequently, submit to the storm of protests they received. However, it is still important to analyze this debate as it can be reduced to the discourse that has plagued trademark law for decades. It hinges on the same contested notions of distinctiveness/descriptiveness and the fight around what in fact does or does not belong to the public realm.
The debate started when two Torontonian art dealers (collectively called the Canadian Art Group), registered as their trademarks the names of a famous group of Toronto painters from the 1950’s; Painters 11 & Painters Eleven. Since registration the Canadian Art Group threatened to sue what they deem “any illegal commercial activity” associated with the trademarks. In fact, Canadian Art group tried to assert their rights in two separate instances. Ironically, they went so far as to send an email to Iris Nowell, (the artist generally acknowledged as having named the group), that her preparations for a book, Painters Eleven: The Wild Ones of Canadian Art were in “express violation” of their trademarks.
This case raised two key issues pertinent to any debate on trademark law. First, is Painters Eleven a descriptive term as per s.12(1)(b) of the Trademark Act, and secondly, if so, has the Canadian Art group been able to overcome its descriptiveness enough to take advantage of the exception in s.12(2) of the Act?
According to s.12(1)(b) of the Trademark Act, a trademark is registrable if it is not clearly descriptive. Those opposing its registration argued that it (Painters Eleven), is a descriptive, non-proprietary term like for example, the Impressionists, and hence that it belongs in the public domain. The Canadian Art group disagreed, and as evidence, they stated that “if you were to go out on the sidewalk in front of the Globe and Mail and stop 100 people and ask who the Painters 11 are, it is likely that you would not get one person that will tell you.” This argument is erroneous since it is not any 100 people that matter for trademark law, but those who are familiar to the domain that the trademark is operating in. For example, in A. Lassonde Inc. v. Canada (Registrar of Trademarks) where the Federal Court was evaluating the registrability of bananaorange (a phonetic equivalent of banana and orange), the court found that whether a mark is not registrable under s.12(1)(b) must be evaluated according to the first impression of the perspective everyday consumer of fruit juice. Therefore, this means that we must use the relevant consumer in the relevant segment of trade where the trademark applies.
Secondly, according to s.12(2), a trademark can be registrable if it has been so used in Canada by the applicant or his predecessor in title so as to have become distinctive at the date of filing an application for its registration. The Canadian Art group argued that a lot of interest in the Painters Eleven artists and their history was lost after the association disbanded, and that over the years it was they who spent the money and resources to get the name out there by developing websites, and marketing the work. They argued that their trademark was necessary to protect their work and effort. However, they did not establish that this descriptive word had attracted a secondary meaning unique to their enterprise, nor were they able to prove that consumers (or rather those in the art field), were able to recognize the mark for their contribution as opposed to its original meaning. This is where the argument that the Canadian Art group simply appropriated the term comes from.
A valid registration gives the owner of the trademark registration the exclusive right to the use throughout Canada of the trademark in respect of those wares or services. In addition, this right is deemed to be infringed by a person not entitled to the registered trademark, who sells, distributes or advertises wares or services in association with a confusing trademark or trade name. From this we are able to see just how much was at stake here, and how the registered holder is given a great deal of power in relation to the mark. So although this was an issue in the art world, it had a scope much larger in that it affected in a significant way more than just the parties concerned.
At an abstract level, we must ask ourselves whether we want to provide incentive for other potential right holders to ‘appropriate’ culturally significant words as theirs. At first, I was concerned that in some way, incentive had already been given for this via the initial registration, but now can rest assured by the expunging that what belongs to the public domain might just stay there.