From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 9 September 2014

Spirit Bear: not an Urban myth, rules court

This Kat would like to say a big thank you to Chris Torrero for sending us the link to this story!

Three years ago, the City of Terrace and Kitasoo Band Council (from British Columbia, Canada) asked Mike Urban to stop using the name and image ‘Spirit Bear’ on his brand of vodkas and gins. Terrace and the Band Council had previously filed trade mark applications for ‘Spirit Bear’.  Mr Urban (from Urban Distilleries) refused, as it would mean investing into the creation of a new brand altogether. Terrace and the Band Council therefore sued him and the matter proceeded to Court. 

Urban Distilleries donate part 
of their proceeds of sale to the
 Spirit Bear Youth Coalition
to help protect the animal
Last week, Honourable Justice Luc Martineau from the Federal Court ruled in favour of Mr Urban, allowing him to continue to use the name and image ‘Spirit Bear’. Justice Luc Martineau said that the trade marks registered by Terrace and the Band Council were invalid because they had not been registered properly, and that they were never properly adopted or used as a trade mark. Terrace and the Band Council were ordered to pay costs to the distillery.

Meanwhile Mr Urban can continue to use the symbol of a Spirit Bear on his bottles and does not have to worry about rebranding. The Spirit Bear is a nickname for the Kermode bear, a white, non-albino species of the black bear, which can be found on the North-West coast of British Columbia. This bear is the official mammal of Mr Urban’s province. Spirit Bear is a reference to the bear, but also to spirits: strong distilled alcoholic drinks.

Since the white Kermode bear is specifically found in that area, it may have been advisable for the authorities to apply for geographical indication protection, relying on Article 22(1) and Article 23 TRIPS. At the moment, there does not appear to be one, which allows anyone to use the name and image of the bear to commercialise their products. However, it is unlikely that the alcohol produced there would qualify for this protection, unless its “quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”

More on the story here and here.

1 comment:

James Wagner said...

As often seems to happen information gets lost through use of a news article rather than the decision (which while not yet published is available upon request).

In brief (and with the disclaimer that I represented the Defendant) official marks for "SPIRIT BEAR" were asserted by the City of Terrace and the Kitasoo Band Council. In Canada official marks can be filed by a government entity, and do not have to be specific to any wares or services, making them potentially very powerful means of trademark like protection.

Geographical indicator protection would not seem applicable in this case, as the Plaintiffs do not produce or license alcoholic beverages, while the Defendant is a Distillery. On the subject of geography I note that BC is a rather large Province, being approximately 3.8 times larger than the UK as currently composed, and that there is a significant geographical distinction between the Plaintiffs and Defendant, as well as a physical distance roughly equivalent to that between England and Switzerland.)

While confusion was argued, no ruling on the issue was made, as the Court found the issue of validity determinative to the case, holding that the official marks were not registered correctly.

Any potential double entendre regarding "spirit" was not argued by either side.

I would note that this is a trial level decision, and an appeal may still be taken up.

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