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Monday, 7 July 2014

LDS Church and Mormon fundamentalist group set for Canadian clash over concurrent use

The public battles between the Utah-based Church of Jesus Christ of Latter-day Saints (“LDS”) and fundamentalist offshoot Mormon sects are legendary throughout western North America. Although the LDS renounced polygamy 124 years ago, it still fights such sects who practice polygamy, whether through public relation campaigns, excommunication of polygamous members, or assisting law enforcement in prosecuting polygamists, in order to protect the LDS’s public image.


Registration 796742
Now, this battle is taking place in cross-border trade mark litigation. Last month, the LDS filed a trade mark infringement lawsuit in the Supreme Court of British Columbia against the Bountiful, British Columbia (“B.C.”) based Church of Jesus Christ of the Latter Day Saints Inc., a polygamist sect headed by Winston Blackmore (“Blackmore Church”). Fundamentalist Mormon sects, like the Blackmore Church, have claimed to be the true heirs of the LDS’ original teachings based on their members’ continued practice of polygamy, and have named their sects with often confusingly similar names to that of the LDS to reflect this association. In this current lawsuit, the LDS claims that the Blackmore Church has infringed its registered Canadian design trade mark that includes the LDS’s name and logo (Registration 796742, registered on May 5, 2011) under the Trade-marks Act, and that they misrepresented their connection to the LDS through passing off use of the LDS’s common law marks that include variations of the mark both with and without its design (collectively, the “common law marks”). For these acts, the LDS claims monetary and punitive damages, a declaratory judgment on the LDS’s ownership of the registered mark and the Blackmore Church’s infringement of it, and both interlocutory and permanent injunctions.

Bountiful, B.C.
The one question that recurs from examining the facts of this case is why the LDS has only recently sought enforcement of its trade mark rights against Bountiful-based fundamentalist sects. The Blackmore Church and its other fundamentalist predecessors have been present in the Bountiful area for decades, and have arguably used the LDS' registered and common law marks in whole or part for much of this period. Yet the LDS has only recently sought legal action for use of such marks. This may be explained by B.C.’s recent delay in fully prosecuting members of the Blackmore Church. Although B.C. courts have upheld the constitutionality of laws making polygamy a criminal act in 2011 (Reference re Section 293 of the Criminal Code of Canada, 2011 BCSC 1588) and Mr Blackmore has been tried and found guilty of tax evasion, B.C. authorities have arguably delayed their prosecution of Mr Blackmore and members of the Blackmore Church for their polygamous acts.

However, the LDS’s claims in this recent lawsuit also derive from a more pragmatic need, namely corporate name registration. The Blackmore Church has incorporated and registered multiple corporate names with the B.C. Corporate Registry (“BCCR”) that encompass the registered and common law marks and similar variations of them. Dating back to 2008, the Blackmore Church registered their church as the “Fundamentalist Church of Jesus Christ of the Latter Day Saints Inc.,” “Church of Jesus Christ of the Latter Day Saints Fundamentalists Inc.”, and most recently, on May 3, 2010, as the “Church of Jesus Christ of the Latter Day Saints Inc.”. It was this most recent registration that prevented the LDS from registering its Canadian branch (“Church of Jesus Christ of the Latter Day Saints in Canada”) with the BCCR.  

Although the Blackstone Church has yet to answer the LDS’s claims, this case potentially comes down to whether the Blackstone Church’s use of the registered and common law marks qualifies as permissible concurrent use. Although the LDS asserts that it has used CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS worldwide since 1838, the Blackmore Church may claim that it has used similar variations of those marks since their members settled in B.C. in 1946. As its 2011 registration is the only Canadian registered trade mark on which the LDS bases its lawsuit, the Blackmore Church may claim that its use of LDS’s marks constitutes permissible concurrent use based on its established prior use of the marks before 2011.

In the U.S. for example, an owner of an unregistered mark may claim concurrent use and be protected from an injunction sought by a subsequently registered trade mark owner if (1) the owners are confined to geographically separate markets and (2) there is no likelihood that the registered trade mark owner will expand their use into the unregistered mark owner’s market. Dawn Donut Co. v Hart’s Food Stores, Inc., 267 F.2d 358 (2nd Cir. 1959) - a ruling that has been questioned in the internet age. As the Blackmore Church is located in rural Bountiful, B.C., which is habited almost exclusively by fundamentalist Mormons, who are insular by definition and reject the LDS for its abandonment of polygamy, the Blackmore Church could claim a concurrent use defense against the LDS Church’s injunctive demands.

Yet because this lawsuit was filed in Canada, and not the U.S., it is likely that such a concurrent use argument will fail. Canada arguably has more stringent requirements for establishing valid concurrent use. Under Section 21 of the Trade-marks Act, a concurrent use finding requires that: (1) a prior common law mark owner’s objection to a trade mark registration be brought within five years of registration of the trade mark; (2) the common law mark owner’s use of the mark was in “good faith”; and (3) the common law mark owner’s use of the mark is not is “not contrary to public interest.” Although this lawsuit is within five years of registration of the LDS’s registered mark, and good faith may be debatable in light of the Blackmore Church’s belief that it is the true Church of Jesus Christ of the Latter Day Saints, it will be difficult to argue that the Blackmore Church’s use of the registered mark was not contrary to the public interest based on their Church’s illegal polygamous activities.

The outcome of this lawsuit is keenly awaited. Meanwhile, no one doubts that this lawsuit will not end the battles between the LDS and the Blackmore Church and other fundamentalist Mormon sects.

1 comment:

James Wagner said...

A few minor points. The number provided was the application number. The issue number is TMA796742. Further, the filing date was Aug 8, 2007, with no claim to prior use in Canada. As well, I note the mark in question is for the design, and not to the words themselves.

The question will be whether the mark was distinctive of the applicant at the time of filing, namely August 8, 2007. At this point the Blackmore group had already been in Canada for over 40 years, however they may not have been using the mark as registered or a confusingly similar variant.

As an aside I wonder why the conflict over the corporate registry would require this litigation as corporate names do not actually confer any trademark rights in BC. The 'denial of registration' for a corporate name may be being used simply as a vehicle to create a new controversy in order to get around potential limitation period concerns.

If the mark is valid, this is probably a good example for S.21 to apply. The "good faith" challenge will be interesting, as there is a clear claim of entitlement by both parties and it sounds as if false or misleading affiliation is being plead.

However, given the long period of common law use and the (presumed) evidence that the mark was not adopted for the purposes of pirating/imitation would likely lead to a finding of good faith.

As to public interest, that will be very interesting. Canadian courts generally seek to avoid adjudicating on the relative merits/validity of conflicting religious positions. The affiliation of Blackmore with polygamous activities may be considered relevant. However, while there was an attempt to convict in 2009 it was thrown out, and while a reference to a trial Court in BC which found that the Polygamy provisions of the criminal code are likely enforceable, there was and remains opinions to the contrary (such that 5 years after the original charge there has yet to be new charges, although there is an ongoing investigation). Given this background, it is not clear to what extent the Court would consider the association of Blackmore with polygamy 1) proven 2) contrary to public interest generally 3) relevant to any common law trademark rights they may have for this particular mark.

All in all, an interesting trade mark case.

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