Trademark Doesn’t Trump Usage

Two competing firms claimed the “Woodpecker” trade name.

A Richmond wholesaler of hardwood flooring learns the hard way that registering a trademark doesn’t necessarily guarantee a business has the right to use a brand name

A recent Supreme Court of B.C. injunction is a clear reminder for businesses of the dangers of choosing a brand name that someone else in the same industry is already using, and provides a useful caution that registering the name as a trademark will not necessarily make the name yours.
The name of a business or product can be a factor in its success. Aside from setting itself apart in the marketplace, a name can become synonymous with quality (Cadillac), or failure (Edsel). Accordingly, a great deal of time and effort will go into picking the right name for the right product.
During the naming process, however, some businesses miss a crucial step: ensuring the name is original, or at least available. They may have to go back to the drawing board if that name, or something too similar, is already taken.
The September 2013 judgment involves two Richmond-based hardwood flooring providers, Woodpecker Hardwood Floors (2000) Inc. and Wiston International Trade Co., Ltd., marketing its products under the name Woodpecker. The plaintiff, Woodpecker Hardwood Floors, had been using that name to sell hardwood flooring products since 2000, but without registering it as a trademark. In early 2013, the defendant, Wiston, registered the name Woodpecker as a trademark for wood flooring products, and associated wholesale and retail services. Woodpecker Hardwood Flooring commenced a lawsuit, and sought an injunction to restrain Wiston from, among other things, marketing hardwood flooring products under the name Woodpecker, pending the trial of the matter. The court granted the injunction.
The court found that Woodpecker Hardwood Floors had acquired rights to exclusive use of the Woodpecker name in association with hardwood flooring in the local market through its use of the name for over a decade, and that it would suffer irreparable harm if Wiston was not prevented from using the Woodpecker name—even though Wiston held it as a registered trademark. 
Wiston may have assumed that because it had registered the name Woodpecker as a trademark, and its competitor had not, that the name was exclusively its to use. However, that was not the case. While registering a name as a trademark provides a number of advantages, including proof of use, nationwide enforceability, and prima facie exclusive rights to its use, it will not extinguish the rights of someone who is already using, and has acquired rights to, the name—trademark or no. A search of the trademarks database in the Canadian Intellectual Property Office alone will not turn up business names that, while unregistered, are nonetheless in use.
Injunctions are equitable remedies—and so fairness, and the interests of justice, are considered when deciding to grant, or refuse, one. In this case, the fact that Wiston registered the name Woodpecker as a trademark with the knowledge that its competitor existed and was already using the name, may well have factored into the court’s decision to issue the injunction.
Bottom line: if another company with a similar product or service in your geographic area is already using a similar name to the one your business wants, you are likely out of luck. Even if the other company has not registered its name, or brand name, as a trademark, simply doing so first will not grant your company exclusive rights to use that name, nor will it override the other company’s entitlement to exclusive use of the name—especially if you are aware of it.
When choosing a brand name, do your research and ensure it is original. It is easier, and cheaper, to go back to the drawing board before you are already in business.


Mark Fancourt-Smith is a partner at Lawson Lundell LLP and has a specialization in trademark protection.