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It’s my party (and I’ll sue if I want to)*

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February 25, 2019

Politics and trademarks may make an odd coupling, but the two realms have squarely met in lawsuits recently filed with the Federal Court.

Satinder Singh Dhillon is claiming intellectual property rights in the name “People’s Party of Canada”. Those who closely follow the sometimes arcane world of Canadian politics will know that this is the same name chosen for a political party whose leader is Maxime Bernier, a former member of the Conservative Party of Canada who served as a cabinet minister under former Prime Minister Stephen Harper.

Last year, Mr. Bernier resigned from the Conservative Party and formed his own party, called the People’s Party of Canada. That People’s Party was officially registered with Elections Canada in early 2019, listing Mr. Bernier as leader. Mr. Dhillon is seeking judicial review of the Elections Canada decision.

Separately, Mr. Dhillon has filed a lawsuit directly against Mr. Bernier and the People’s Party of Canada, seeking an injunction to prevent the use of that name during a by-election currently underway in British Columbia, as well as during the general election which will take place in October 2019. According to a press release,[1] “Mr. Dhillon owns the copyright and has registered for a trademark on the name”. That same press release states that “Mr. Dhillon first publicly discussed the party name in a 2015 media story”.

These statements raise a number of IP-related issues:

  • Copyright subsists only in specific types of “works” as set out in the Copyright Act. Copyright gives the owner the exclusive right to produce and reproduce the “work”. The name People’s Party of Canada is not proper subject matter for copyright, as it is neither an artistic work, a literary work, nor any other type of work covered by the Copyright Act.

  • In some cases, copyright can overlap with trademark rights. For example, when a trademark consists of a logo, then that logo may be considered an artistic work subject to copyright protection. To the extent that the logo functions as an indicator of the source of specific goods and/or services, then the logo would also be protectable as a trademark.

  • According to the website of the Canadian Intellectual Property Office, Mr. Dhillon has not yet obtained a trademark registration for People’s Party of Canada. An application to register the trademark was filed on September 14, 2018, but this application must go through a number of steps prior to becoming registered. The owner of a registered trademark has a greater number of tools at his or her disposal to assert against an alleged wrongdoer, including infringement and depreciation of goodwill. Without a trademark registration in hand, a trademark owner must rely on passing off, which is typically more onerous to establish.

  • Finally, the fact that Mr. Dhillon may have first publicly discussed the party name in 2015 does not necessarily give rise to trademark rights in the name going back to 2015. Trademark rights hinge upon “use” of the mark in association with specific goods and/or services. The concept of use underpins the entire Canadian trademark system. The term is defined in the Trademarks Act, and has been the subject of much litigation and academic commentary. Mr. Dhillon’s application was filed for use in association with a “political party”. Leaving aside the issue of whether “political party” is a proper way of defining the services in the trademark application, in order to claim trademark rights going back to 2015, Mr. Dhillon would have to establish that he used People’s Party of Canada as a trademark for a political party as early as 2015.

Some may wonder whether political party activities qualify as a “service” under the Trademarks Act, and whether use of the trademark can be shown where such activities are mostly non-commercial in nature. It would appear that these activities are “services” capable of being covered by a trademark registration, based on the broad interpretation of that term by the courts.[2] Past decisions have also held that it is not necessary for money to change hands in order for use of the trademark to occur, so trademarks can cover non-commercial activities.[3]

Another interesting issue raised by this case is whether it would be more appropriate to have the names of political parties protected as collective marks, which are owned by entities such as associations to identify certain characteristics of the entity’s goods and/or services. While collective marks per se are not currently protected under Canadian trademarks law, there is an obligation that such protection be afforded under the United States-Mexico-Canada Agreement (USMCA, or “NAFTA 2.0”). It remains to be seen whether this will provide another avenue for political parties to seek protection for their names.

In the meantime, we will have to stay tuned to find out what happens with the People’s Party name.

 

* Special thanks to Idan Erez, associate at Hoffer Adler LLP, for coming up with this title!
[1] https://www.wireservice.ca/index.php?module=News&func=display&sid=24525. Note that the contents of this blog post are based on the information available in this press release, as well as mainstream news reports.
[2] See, for example, Hilton Worldwide Holding LLP v. Miller Thomson LLP, 2018 FC 895
[3] War Amputations of Canada v. Faber-Castell Canada Inc. (1992), 41 C.P.R. (3d) 557 (TM Opp. Bd.)