The Toronto Star is reporting that Canadian architect and indigenous activist Douglas Cardinal is seeking an injunction to prevent the Cleveland Indians from wearing uniforms bearing their logo and team name, and from displaying their logo when the visit Toronto this week for the Major League Baseball playoffs. The legal basis for the injunction is an argument that the team’s name and mascot are discriminatory. Mr. Cardinal has also filed human rights complaints with the Ontario Human Rights Tribunal and the Canadian Human Rights Commission.
While Mr. Cardinal is litigating, he might also want to consider that the name and the offensive cartoonish mascot are also registered trademarks in Canada. (Search for “Cleveland Indians” in the Canadian Trademarks Database). Challenges to the registration of the Washington Redskins’ notorious trademarks are currently before the courts in the U.S. The Redskins trademarks, which most recently have been cancelled in the U.S. for being disparaging of Native Americans (with that decision under appeal), are also registered trademarks in Canada. To date, no one has challenged these or other offensive trademarks in Canadian courts.
Canada’s Trade-marks Act bars the adoption, use or registration of trademarks that are “scandalous, obscene or immoral”. I have written before about circumstances in which this provision has been invoked – or not – to disallow the registration of trademarks. Any challenge to the validity of the marks could be based on the argument that the marks should never have been registered, as they were racist and discriminatory at the time of registration (which, in the case of the Cleveland logo was in 1988). While an applicant to have the trademark expunged might have to address issues of delay in bringing the application, it should be noted that s. 11 of the Trade-marks Act also prohibits the use of a trademark that was adopted contrary to the provisions of the Act. In principle then, the continued use of a trademark that was “scandalous, obscene or immoral” when it was adopted is not permitted under the legislation. Of course, this use restriction raises interesting freedom of expression issues. In the United States, marks that are denied registration for being “disparaging” can still be used, thus arguably shielding the trademarks legislation from First Amendment (free speech) challenges. There is a great deal of unexplored territory around the adoption, use and registration of offensive trademarks in Canada.
Former Justice Murray Sinclair of the Truth and Reconciliation Commission (now Senator Sinclair) called for action to address the use of offensive and racist sports mascots and team names. Douglas Cardinal has clearly responded to that call; there is still more that can be done.
Note: At the hearing on the injunction on October 17, 2016, the Court declined to grant the injunction, with reasons to follow. Toronto Star coverage is here.