Redskins, Eskimos, And Indians: The Canadian Approach To Disparaging Trademarks

1. INTRODUCTION

   In Pro-Football, Inc. v. Amanda Blackhorse1 ("the REDSKINS decision"), the U.S. District Court for the Eastern District of Virginia upheld an earlier decision of the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (USPTO) canceling six trademark registrations containing the term REDSKINS on the basis that they may disparage Native Americans. The decision raises interesting questions for trademark practitioners in Canada, where issues regarding Aboriginal peoples have recently taken a front seat in the national consciousness.

   In June 2015, the Truth and Reconciliation Commission of Canada released its summary report on forced residential schooling of First Nations children.2 This report—the conclusion of a six-year examination of the history and legacy of residential schools—encouraged Canadians to revisit and reconsider their history in the treatment of First Nations' peoples. This national introspection raises the question of whether trademarks such as REDSKINS, EDMONTON ESKIMOS, and INDIAN MOTORCYCLE, all of which are registered as trademarks in Canada, may face successful challenges in Canada as well on the basis that they no longer represent socially acceptable commercial designations. This commentary will briefly look at the Canadian statutory regime governing scandalous trademarks, and how it might apply to a REDSKINS-like claim.

2. WHAT TRADEMARKS ARE PROHIBITED IN CANADA?

   Section 9(1)(j) of the Canadian Trade-marks Act3 prohibits any person from adopting "in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for . . . (j) any scandalous, obscene or immoral word or device." This is distinguishable from the analogous provision in Section 2(a) of the Lanham Act,4 relied on in the REDSKINS decision, in several notable respects.

   Under the Canadian Trade-marks Act, the grounds upon which a mark may be attacked are much narrower than under U.S. law, which applies not only to trademarks that consist of "immoral, deceptive, or scandalous matter" but also to marks consisting of matter "which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." In addition, the effect of the prohibition in Canada is wholly different. In the United States, only registration is prohibited. This was critical in the REDSKINS decision, where cancellation of the registration did not preclude use of the mark (and thus, in the view of the Court, did not impinge on any First Amendment free speech rights). In Canada, Section 9(1)(j) is an outright prohibition against any adoption of the mark, be it registered or unregistered.

3. WHEN MUST THE MARK BE CONSIDERED OBSCENE OR...