The trademark dispute between blues singer Lady A and the band Lady Antebellum has garnered significant media attention, as well as attention from the trademark community. Lady Antebellum, already on the receiving end of significant pushback for the band’s name being a reference to the pre-Civil War period of American history marked by the horrors of slavery, found themselves embroiled in an entirely new mess due to their new name being the same name used by a blues singer from Seattle.
One complicating factor in this dispute, where it appears that the blues singer Lady A is the senior trademark user, is that Lady Antebellum has had two trademark registrations on the Federal Register in the United States for a decade. A United States trademark registration becomes incontestable when a Declaration is filed under Section 15 of the Lanham Act which can be filed five years after registration, certifying that there have been five years of continuous use of the trademark. Incontestability provides certain presumptions to be raised with respect to the trademark registration and prevents certain grounds of cancellation, including that the mark is descriptive.
How would this trademark situation have played out differently if both parties had been located in Canada? In Canada, trademark registrations become incontestable after five years, but there are two major differences from incontestable trademark registrations in the United States. The first is that trademarks become incontestable five years from the date of registration automatically. Unlike in the US, there is no requirement to file a Declaration or to have a certain period of continuous use of the trademark. The second major difference is that the only impact of incontestability is that an incontestable trademark registration in Canada cannot be expunged or held invalid based on the ground of third party prior use of the trademark. The only exception to this rule is if it can be proved that the registrant had actual prior knowledge of the prior use, which is extremely difficult to prove. This means that, if the fact scenario in the United States had happened in Canada, Lady A’s prior common law trademark rights would likely not trump Lady Antebellum’s trademark registration.
An additional interesting wrinkle in this scenario is that Lady Antebellum actually did file a trademark application in Canada for LADY A in 2010, and that application issued to registration on February 12, 2016. This registration will therefore become incontestable on February 12, 2021. Amidst the negotiations that would surely be taking place, there would be a hard deadline for Lady A to file a lawsuit to cancel the registration.
Lady Antebellum is seeking a declaratory judgement that its trademark registrations are valid. One reason that declaratory judgements are often sought is to try to stake a claim in the jurisdiction where the case will ultimately be heard. In Canada, on the contrary, the Federal Court is the only court that has the jurisdiction to expunge a trademark registration, and so a declaratory judgement would likely not be as appealing to Lady Antebellum if this case was playing out in Canada.
There does not seem to be any evidence that Lady A ever made use of her trademark in Canada, and so this is a purely hypothetical scenario, but it is interesting to see the very different way that this case would likely play out in Canada.