Small business shouldn’t be the one to suffer under regulations for intellectual property

The local Brick's Fine Furniture received instruction from The Brick to cease and desist using the name, but was able to fight it. Photo by AJ Batac
The local Brick’s Fine Furniture received instruction from The Brick to cease and desist using the name, but was able to fight it. Photo: AJ Batac
Bold Ideas Dorothy Dobbie
Bold Ideas
Dorothy Dobbie

I don’t remember the exact wording, but one day when I was president (now designated “chair”) of the Winnipeg Chamber of Commerce, Cynthia and Fred Brick, owners of Brick’s Fine Furniture, showed me a legal letter they had received from The Brick, the furniture box store. It demanded that the Bricks must “immediately cease and desist using the name Brick.”
The Bricks were reeling in shock when they came to talk to me. This was their livelihood, their life, their whole world. It was also their family name and they had been in business for many years, opening in 1969, long before The Brick registered the name (1978) and became an entity operating out of Alberta (eventually creeping across Canada and finally opening a store in Winnipeg). The Bricks were panic-stricken thinking of how to battle this multi-million-dollar giant.
Not long after that, I was elected to Parliament and eventually became parliamentary secretary for Consumer and Corporate Affairs, which was then a separate department. Soon after, another challenge raised its head for a local business. The De Nardi family, who now own Piazza De Nardi, had spent many years developing a brand called Mondo Foods, which they had duly registered in Canada, but not internationally. Suddenly they were threatened by an American competitor who made similar cease and desist demands.
Without going into detail, I raise these two cases as examples of how intellectual property (IP) rights can be turned into a sledge hammer to elbow small business out of the way. We were able to resolve both these cases through hard work and moral suasion, but more often than not, the threatened entrepreneur just folds because he doesn’t have the resources to fight the giants who are coming after him.
Chamber of Commerce fighting to help
Now the Winnipeg Chamber of Commerce is taking up the cudgel for small business again in calling for reconsideration of changes proposed in the omnibus budget Bill C-31. Among the many provisions of the bill is one that would see the elimination of the declaration of “use” in trademark application forms. Currently the legislation requires that to register a name as a trademark you have to actually use it or at least propose to use it.
(New businesses take note: the fact that you have registered your business provincially does not mean that you have trademark protection even now in another jurisdiction or province – SMART Tab may be protected in Manitoba because it is our trade name here, but that doesn’t stop someone in Alberta from using the same name there. Use and display of a distinctive name does, however, give you an argument in defending yourself from demands from a predatory competitor that you stop using your name.)
The “use” issue is an important, even critical, issue for small business all across Canada from a number of perspectives. Chief among these is that it prevents “trademark trolls” from simply collecting names and registering them in the hope that they will be able to ransom the name from a legitimate user. It focuses the onus of proof on the predator.
The government’s case
The government justifies this change by saying that Bill C-31 provides for two new grounds for opposition: you have to show that as of the filing date, the applicant was not using or did not intend to use the trademark; or that as of the filing date, the applicant was not entitled to use the trademark.
This shifts the onus to those defending themselves against incursion by a trademark troll or a deliberate piracy. It need not be stated that small business will be basically helpless against such an assault.
Canada justifies these changes by saying that they are required to support international trade agreements. There is no evidence to support this contention, however.
Your only defence is a good offence: formally register everything and keep registrations current. It is probably too late to make the government pass amendments to their bill, although you can try lobbying the senate which still has to ratify the bill which was in third reading in the House as this is being written.
Who do the intellectual property rules protect?
This is just one tiny component of the can of worms called “intellectual property.” The laws are always defended by saying that they protect the creators, but this is nonsense: they always protect the manufacturer, marketer or distributor of the property, while the creative genius is most often left behind.
Today, with the Internet offering so much choice and the impossibility of tracking down copiers across the globe, IP is more and more under assault. Not everyone agrees to play by 19th century rules created to protect western interests. Watch for a whole new structure to begin to emerge, one that promotes sharing of ideas (already happening thanks to the ‘net) and results in more rapid progress.
It’s time to be bold and think of a better structure that doesn’t stifle ingenuity and enterprise in the way that the old IP rules ultimately do. There has to be a creative genius in Winnipeg who can come up with an idea to fix this mess.

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