A Target for Trade-mark Infringement in Canada?

Following the recent announcement by the major US-based retailer, Target Corp, of its plans to enter Canada, Fairweather Ltd, the owner of the Canadian-based retailer Target Apparel, has commenced a lawsuit against Target Corp, seeking an injunction and significant damages for trade-mark infringement in relation to use of the Target name and bulls-eye design feature. The Canadian entrepreneur Isaac Benitah controls several Canadian retail chains including Fairweather, International Clothiers, and Target Apparel. He and his companies have claimed ownership of the Target name for a decade or more, noting that several of their Target stores already exist, and that additional locations will soon open. The two competitors have previously clashed in Canadian courts. In 2005, Target Corp brought an action to expunge the Target Apparel trade-mark. Benitah had acquired the trade-mark in 2001 via insolvency proceedings and later had been faced with a request from the Registrar of Trade-Marks to produce evidence of use in the previous three years. The resulting decision of the Registrar to expunge the trade-mark was reversed by the Federal Court, a decision which Target Corp further, and unsuccessfully, appealed to the Federal Court of Appeal. Currently, the two Targets have a court date pending for May 2, 2011. For the 2008 Federal Court of Appeal decision, Bereskin & Parr v Fairweather Ltd [2007] FCA 376, see: http://decisions.fca-caf.gc.ca/en/2007/2007fca376/2007fca376.html For a recent media report on the topic, visit: http://www.cbc.ca/consumer/story/2011/01/18/fairweather-target.html Summary by: Cindy Vergara