Roots loses trademark dispute over cabin logo
Andrei Mincov's commentary on the original article
There are several lessons here. First: had Roots never trademarked the image of the cabinnot by itself, nor as part of the overall illustration that they have used on the packaging of their socks. But if you look at their image, it doesn't only have the image of the cabin. It has the image, the words "CABIN SOCKS", the name "ROOTS CANADA" and everything else but the kitchen sink. This is why YM survived the likelihood of confusion challenge. Roots actually had a good argument relating to filing a false declaration of use. This will soon become a thing of the past in Canada, but for decades, a trademark could only be registered in Canada after it was in use. In other words, you could file your application before you started using the brand, but then you needed to file what's called the "declaration of use" to indicate that you're actually entitled to the registration. Canadian Intellectual Property Office does not check if you are actually using the brand. Which makes it tempting for some brand owners to lie about it. The danger, at least by the book, is that if you file a false declaration of use, your entire trademark registration becomes vulnerable for cancellation. In this case, the Federal Court spared YM and only stripped their registration of the goods they've never used, rather than kill the entire registration. Which brings me to the third lesson. As I mentioned, Canada will soon no longer have use as the requirement for registration. This only means one thing: if you don't want others to steal your brand and register it as their trademark, you must trademark yours. Now.