Tangerine case shows value of registering trademarks
Originally published in AdvocateDaily.com
A small financial service company’s battle against Scotiabank over its use of the Tangerine name highlights the importance of pursuing a trademark application to completion, says Toronto IP lawyer John Simpson.
In a case before the B.C. Supreme Court this month, the Globe and Mail reports, B.C.-based RSP Generation LP is seeking to prevent Scotiabank from adopting Tangerine as a trademark for its new subsidiary, claiming it owns the name and has used it since 2008. Scotiabank denies any violation of RSP’s rights.
RSP bought the assets of a company called Tangerine Financial Projects LP in 2012, which “aimed to market a financial strategy related to unused registered retirement savings plan contribution limits,” but had gone into receivership, the article notes.
According to court documents, says the Globe, Tangerine LP applied for a trademark in 2007, but “did not complete the declaration of use required to complete the registration process, resulting in the application being administratively inactivated.” The article notes that when the company was in receivership in 2011 and 2012, it was unable to use the mark.
After Scotiabank acquired ING Bank of Canada in 2012, it rebranded the subsidiary, applying to trademark the Tangerine name in August 2013 and announcing the new name in November of that year. RSP says it reapplied for the Tangerine trademark in late November 2013.
This case, says Simpson, shows how vital it is to pursue a trademark application to completion, as you never know how valuable that registration might be to someone else.
“I’m sure that RSP now wishes it had filed its declaration of use and secured registration for Tangerine in association with financial services. That would have put it in a much stronger position against Scotiabank who would have to invalidate RSP’s registration or else purchase the registration from RSP in circumstances where RSP could virtually name its price,” he says.
At the same time, says Simpson, RSP's failure to complete the declaration of use does not necessarily mean Scotiabank can use the Tangerine name now.
“The fact that RSP never managed to register the trademark because it allowed its application to lapse does not mean it lost all rights in the trademark as against a party like Scotiabank. For instance, RSP can still sue Scotiabank for ‘passing off’ – on the basis that Scotiabank’s use of Tangerine is confusing with RSP’s or its licensees’ use – and seek an injunction against Scotiabank from using Tangerine. That might be a very tall order since it looks like RSP had very limited, if any, use of Tangerine itself. But RSP could also oppose Scotiabank’s currently pending applications to register Tangerine as a trademark on the basis that Scotiabank is not the person entitled to register it. I expect it will do just that as soon as Scotiabank’s applications are advertised and available to be opposed," he says.
Ultimately, says Simpson, trademarks should always be treated as valuable assets.
“Even if a trademark isn’t valuable to you, it might be very valuable to someone else – who might just be huge corporation with big plans for the trademark. The best way to secure the value of a trademark is to register it.
“I’m sure this will only be round one in the battle over whether Scotiabank can register and use the Tangerine trademark. I suspect that the main event – a trademark opposition proceeding – is yet to come.”