After a two-year battle over the trademark “Lawyers Without Borders,” a Canadian non-profit has been awarded an expungement application against a U.S. group that uses a similar mark.
On Nov. 29, 2012, the Federal Court of Canada settled the dispute between the rivaling Canadian and U.S. non-profit organizations by striking the American company’s LWOB trademark from the registry. Both groups had been offering legal services to Canadian residents while taking on the trademark “Lawyers Without Borders.”
“The question the court had to decide was whether or not the trademark belonging to the respondent should be expunged, and the answer to that was yes,” said Joanne Chriqui, a lawyer for Avocats Sans Frontieres Quebec (ASFQ).
Since Oct. 23, 2002 ASFQ, known as Lawyers Without Borders Canada in English, has been providing charitable legal services across the globe. It originally filed the application after discovering Lawyers Without Borders Inc., a U.S. organization located in Hartford, Conn., was already registered with the name.
LWOB Inc. applied for registration in 2003 for its Canadian legal services, and obtained U.S. registration for the trademark in 2003. Combined, both charities claim to offer international legal support to help countries establish a rule of law.
“These are all very worthwhile entities,” said Chriqui. “Nobody was trying to get anybody kicked out of anything. It was just a question of who does the Canadian trademark rightfully belong to.”
The ASFQ initially launched the expungement application on Jan. 26, 2010, claiming the registered trademark “Lawyers Without Borders” did not distinguish the services offered by the U.S. organization, but rather, the activities of the ASFQ since 2002.
It claimed LWOB Inc. violated s. 57 and s. 18 of the Trade-marks Act, making the mark invalid.
“We saw more and more potential for confusion, and we saw it on a number of occasions,” said Pascal Paradis, a lawyer and founding member of ASFQ. “We thought that the situation needed to be clarified so that’s why we were forced to think about legal procedures to make sure that the mark was clarified.”
According to court documents, in the spring of 2008 the ASFQ applied to the Canadian Intellectual Property Office to register the trademark but was denied approval because of “a likelihood of confusion” with LWOB Inc. that was registered three years prior.
But despite CIPO’s denial, Paradis wrote in his affidavit that the organization has been “referenced at least 150 times in major Canada-wide newspapers,” radio, and “T.V. outlets such as the CBC and Radio Canada” with the affiliated LWOB trademark.
“I think we are quite present and quite active in the human rights field, and we have lots of partners throughout Canada,” said Paradis, who claimed they had “never crossed roads” with the U.S. organization in Canada and was unaware of its existence.
However, Christina Storm, executive director and president of LWOB Inc., disagrees. In her affidavit, she claims the organization has been involved in Canada’s legal system since 2001.
“In the last few years alone we have briefed and dispatched a number of Canadian lawyers into the rule of law assessments, trial observations, and other projects around the world,” wrote Storm in her affidavit, adding “in our interactions with the University and its volunteers the LWOB trademark was displayed on most if not all correspondence.”
Before registering the trademark, Michael Crinson, Storm’s lawyer for the case, claimed his client was unaware the ASFQ was operating in Canada. He says the reason it didn’t seek legal action before the ASFQ was because it was more interested in doing “charitable rule of law work.”
But despite Storm’s claims, Justice Francois Lemieux ruled in favour of the application, ordering the registration of the American group’s mark be struck from the registry. Lemieux wrote the “evidence submitted by ASFQ” was overwhelming and “clearly established” it was associated with the trademark, and not LWOB Inc., “whose evidence of use of the mark in Canada” was “extremely poor.”
“I am persuaded, based on the evidence before me, LWOB Inc. was not the person entitled to register the LWOB mark for the reason that it was not the first person to use or make known the LWOB mark in Canada,” wrote Lemieux.
But despite the ruling, Crinson says if it continues to conduct businesses as normal, according to the Trade-Mark Act, he doesn’t see why LWOB Inc. can’t continue to use the mark.
“I think there’s no reason why my client can’t continue to do what it has been doing,” said Crinson, confirming that LWOB Inc. has submitted a notice for appeal.
“As far as the public is concerned, it seems very unfortunate that two not-for-profit organizations would not be able to figure out a sensible solution,” said Daniel Bereskin, a trademark lawyer and partner at Bereskin & Parr LLP.
He believes the factual evidence presented during the application hearing will make it difficult to hold up the appeal in court.
But despite the possible appeal, both Chriqui and Crinson say the organizations have nothing but respect for each other’s work.
“It was an unfortunate situation where they could not agree on the legality or the ownership of a Canadian trademark, but that doesn’t negate the good work that both sides are doing around the world,” said Chriqui.
As for the future, Paradis hopes his organization will be able to focus “entirely” on human rights issues.
“We hope this is the end of the story, but unfortunately the American entity Lawyers Without Borders Inc. has filed an appeal, so let’s see what’s next,” said Paradis.