KELOWNA, BRITISH COLUMBIA--(Marketwired - Sept. 4, 2014) - Federal Court win for award winning distillery in long running trademark dispute with City of Terrace and the Kitasoo Band Council over the use of the SPIRIT BEAR name.
The decision of the Honourable Justice Martineau of the Federal Court in Federal Court Action T-700-13 released September 2, 2014 found that both the City of Terrace and Kitasoo Band Council's Official Marks for SPIRIT BEAR were invalid, having been improperly registered. In particular Justice Martineau found that the SPIRIT BEAR marks had not been properly adopted, and had not been used as a mark. City of Terrace and Kitasoo Band Council were also ordered to pay costs to Urban Distilleries.
City of Terrace and Kitasoo Band Council filed official marks for SPIRIT BEAR in 2003 and 2006 respectively, after which they began to work together to license the mark to businesses and collect royalty payments.
When first asked by the City and Band Council to stop using the Spirit Bear marks in 2011, Mike Urban, Owner and Master Distiller of Urban Distilleries, refused to rebrand his award winning Spirit Bear Gin and Vodka lines. Mike Urban knew that the cost of rebranding could sink his fledging business, and believed he had a right to use the names freely. He had named the brand as a tribute to the Spirit Bear, the official mammal of British Columbia, and as a symbol of the purity and local nature of the artisanal Spirit Bear Gin and Vodka products. The Spirit Bear, also known as the Kermode Bear, is a white, non-albino subspecies of the Black Bear found in the northwest coastal region of BC.
After 4 years of uncertainty Urban Distilleries' legal team, lead by James Wagner of Magellan Law Group LLP, achieved success on every ground decided by the Court. Urban Distilleries is now free to continue to use the SPIRIT BEAR as part of the description of its award winning Spirit Bear Gin, Spirit Bear Vodka, Spirit Bear Espresso, Spirit Bear Vanilla, and Spirit Bear Chilies products, which are available at the distillery in Kelowna, online at www.urbandistilleries.ca and at select BC Liquor Store locations.
This rare decision invalidating two official marks highlights an oddity of Canadian trademark law, where any government entity can apply for an Official Mark without an examination as to whether and how they used the mark. While for the most part, government agencies have been self-enforcing, opportunities for abuse persist unless the law is changed.
Urban Distilleries is Kelowna's oldest and largest craft distillery. Founded in 2009 it has received numerous awards, including the GOLD MEDAL - California International SIP awards 2012 for Spirit Bear Gin, and Platinum MEDAL for Spirit Bear Vodka.
James J. D. Wagner is a lawyer and trademark agent managing the Intellectual Property group at Magellan Law Group LLP, a full service law firm in Langley, British Columbia. Magellan Law Group LLP was recently voted Best Law Firm for the second year in a row in the Langley Advance Choice Awards.