Trade-marks are an important part of any company’s intellectual property, they exist to identify the trade source of products (and services) to potential customers. A business can also register its trade-mark under the trade-marks laws in their country, this registration is not mandatory but can often help a business when dealing with its trade-marks and when it is under attack. However, in certain circumstances, a company’s trade-mark registration may be cancelled by the trade-mark office.

Such a cancellation recently occurred in the United-Sates and attracted much media attention. The case involved the National Football League’s Washington Redskins team. Over the years, the team has been pressed by numerous groups (most notably Native Americans), to change the name of the team, as they find “Redskins” to be offensive and insulting to Native Americans.

Since the team refused their request and insisted on keeping the name “Redskins”, some Native Americans pursued the matter at the U.S. Trademark Trial and Appeal Board to have the registration cancelled. The plaintiffs’ argument was that the team should lose their trade-mark protection based on a law that prohibits registered names that are disparaging, scandalous, contemptuous or disreputable.

Well, they won!

The U.S. Patent and Trademark Office cancelled the trademark registration based on the fact that they deemed the team name to be “disparaging of Native Americans, when used in relation to professional football services.”

The team will appeal the ruling and, despite cancellation of its registration, can still use the Redskins name, but it will be much harder for them to protect it.

Could such a case be ruled in a similar way in Canada? Well, the Canadian trade-marks Act does ban the adoption for business use of any “scandalous, obscene or immoral” word as a trade-mark, so a serious argument could be made against such a name in similar circumstances.

In Canada, scandalous and immoral marks are ones that shock or outrage a substantial number of people, including marks with racial connotations. Moreover, according to the Canadian Trade-Mark Office, a scandalous mark is one that “is offensive to the public or individual sense of propriety or morality, or is a slur on nationality and is generally regarded as offensive”, and an immoral mark is one that conflicts with “generally or traditionally held moral principles”.

So, what do you think? Does the name “Redskins” fall under the Canadian definitions of scandalous or immoral?

If you have any questions, please feel free to contact me at 514-856-5601 (320) / malek@maleklaflamme.ca