Teresa Scassa - Blog

Wednesday, 25 September 2013 13:02

"Redskins" Trademarks in Canada

Written by  Teresa Scassa
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Last week, the CBC reported that an amateur football club in Nepean, Ontario, reached the decision to change its name following a spate of negative publicity that enveloped it after it was revealed that a human rights complaint had been filed in relation to its name. The Nepean Redskins had used this name for their club since 1981. The organization's jerseys, helmets and website also feature the same Indian-head logo as the U.S.-based Washington Redskins NFL team.

In the United States, the Washington Redskins have long faced challenges to the validity of their registered trademarks under section 2(a) of the Lanham Act. This provision bars from registration any mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Although these challenges have not been successful to date for mainly procedural reasons, they are ongoing. In fact, arguments in a new challenge were heard in March of 2013, and the decision in this matter is pending. There are signs that the trademark may well be in real jeopardy this time, and even the NFL Commissioner Roger Goodell has suggested that it might be time for a change. Of course, even if the trademark registration is canceled, the team could continue to use the mark as an unregistered trademark – one with a substantial amount of accumulated reputation and goodwill. Nevertheless, the loss of the protection available to registered trademarks will make the team’s enforcement of its rights much more difficult.

It may come as a surprise to many Canadians that the Washington Redskins also hold registered trademarks in Canada since 1980. The marks are registered for use in association with televised games, as well as for a range of other branded merchandise such as jerseys, hats, sports equipment and a range of other items.

Like the U.S. legislation, Canada’s Trade-marks Act bars the registration of trademarks that are considered “scandalous, obscene or immoral”. Marks that are not registrable at the date of registration can also be invalidated after the fact on the application of the Registrar or “any person interested”. No attempt has ever been made to challenge the validity of the registration of the Redskins mark in Canada; indeed there is scarcely any case law in Canada that touches on the interpretation of the “scandalous, obscene or immoral” bar to registration. It is not clear, for example, whether it would be interpreted to have the same breadth as the U.S. provision which also bars the registration of marks that are disparaging. Nevertheless, the potential impending demise of the Redskins’ trademarks in the U.S. raises interesting questions as to the fate of the Canadian registrations. If, after all, the mark is considered too offensive to be registered in the United States, would there any reason to consider it less offensive in Canada?


Last modified on Wednesday, 25 September 2013 13:16
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