The Ford Motor Company vs. Ford Nation Trade-Mark Issue
The Ford Motor Company was not impressed by the use of its trade-mark on t-shirts made by supporters of Toronto mayor Rob Ford. “Ford did not grant permission for use of its logo,” Jay Cooney, a company spokesman, told Bloomberg News. “We view it as an unauthorized use of our trademark and have asked it to be stopped.”
Under Canadian law, what rights does a company have to prevent such unauthorized use of its trade-mark?
Under Canadian trade-mark law, there are several angle from which the owner of a registered trade-mark may prevent the unauthorized use of its trade-mark, including infringement, and depreciation of goodwill.
The owner of a registered trade-mark has the exclusive right to the use of the trade-mark in Canada with respect to the wares and services for which the mark is registered. Any unauthorized “use” is deemed to be infringement.
The definition of “use” in the Trade-marks Act refers to the transfer of property “in the normal course of trade”. A perusal of the CIPO trade-marks registry shows that the Ford Motor Company of Canada, Limited, does have a registered trade-mark for the famous Ford logo in association with clothing, including t-shirts, however, they would still have to show that the “Ford Nation” t-shirts were transferred in the normal course of trade.
The Trade-marks Act also allows owners of registered trade-marks to recover damages of the use of a registered trade-mark has depreciated the value of the goodwill attached to the mark. Canadian courts have been reluctant to award damages for dilution where a mark has not been used in a commercial sense.
The Ford Motor Company may also attempt to seek damages under copyright law. Copyright exists in an original logo, such as the Ford logo, however, in order to recover damages under the Copyright Act, they would have to prove damages. The Copyright Act does allow for recover of statutory damages, however, under if the infringements were for “non-commercial purposes”, the statutory damages would be in the range of $100 to $5,000, at the discretion of the court. Also, recent amendments to the Copyright Act have expanded the fair dealing defense to include parody and satire, and the use of the Ford logo on the Ford Nation t-shirts may fall under the fair dealing provision.
The bottom line is that if you are the owner of a trade-mark you alone are responsible for protecting it. In this case, whether that goes beyond a cease and desist letter to whomever was responsible for the distribution of these “Ford Nation” t-shirts will be up to the Ford Motor Company.
If you have any questions regarding trade-marks, please do not hesitate to contact a lawyer in the Intellectual Property department at Devry Smith Frank LLP.