A Cautionary Trade-mark Tale: Suzanne's Inc v Auld Phillips Ltd

In the decision Suzanne's Inc v Auld Phillips Ltd, 2005 FCA 429, the Canadian Federal Court of Appeal recently affirmed a trial decision in which an owner lost its trade-mark rights because a single competing user began to use the name extensively, and, as a result, the trade-mark lost its distinctiveness. The applicant for the trade-mark SUZANNE'S, Auld Phillips Inc (AP Inc), operated a clothing store by that name in British Columbia starting in 1972. Nearly a decade later, Suzanne's Inc (S Inc) of Edmonton Alberta opened a clothing store under the same name, knowing of the use of the name by AP Inc in BC, but unconcerned until AP Inc expanded into Alberta in 2002. S Inc then applied for a trade-mark registration which was opposed by AP Inc. The Federal Court of Appeal affirmed that the trade-mark SUZANNE'S had lost its distinctiveness, notwithstanding that the loss occurred solely through the actions of a competitor. The case serves as a strong reminder that trade-mark owners who ignore infringements jeopardize their rights. For the text of the trial and appeal judgments, visit : http://decisions.fct-cf.gc.ca/fct/2005/2005fc48.shtml; or http://decisions.fca-caf.gc.ca/fca/2005/2005fca429.shtml Summary by: James Kosa