A Wanakome divided: Wanakome v Martin

Overview

In a recent trademark and copyright case, Wanakome Inc. filed suit against Eric and Kara Martin and their company, Park Enterprises Worldwide Inc., under subsections 7(b), (c) and (d) of the Trademarks Act. The case involved allegations of trademark infringement relating to the unregistered trademark WANAKOME and the validity of a copyright registration owned by Park Enterprises for the Wanakome logo.  The Court noted that at the heart of the litigation is a “dispute over who has rights to the WANAKOME trademark and the copyright in the Wanakome Logo.”

Initially, the parties had a professional relationship described as a partnership by all involved.  Park Enterprises was responsible for sales, marketing, public relations, and design aspects of the Wanakome clothing line. On the other hand, Hadad managed the finances and oversaw the administration and production of the clothing line.  

The Divide

The relationship between the parties deteriorated when Hadad established the corporation Wanakome Inc. and excluded Eric Martin as a shareholder. Shortly after, Wanakome Inc. filed a trademark application in Canada for Wanakome, which Park Enterprises and the Martins opposed. Wanakome Inc. accused the defendants of unauthorized sales of Wanakome products and illicit association of Park’s LIO brand with Wanakome. 

Trademark Ownership

The first question the Court considered was who owned the Wanakome trademark. The issue arose as a defence to Wanakome Inc.’s allegation of trademark infringement. Park Enterprises argued that Eric should have part ownership of the trademark as a partner, and Kara Martin designed the mountain logo. Moreover, the Martins designed much of the branding, and their visit to Lake Wanaka in New Zealand inspired the name Wanakome. 

The Court decided that there was “a live dispute between Hadad and the Martins as to their respective interests in Wanakome Inc. that extends beyond the jurisdiction of this Court” including whether Hadad had authority to terminate the relationship with the Martins and take sole control over the trademark. In view of this decision, the Court decided it could not declare that Wanakome Inc. had all rights, title, and interest to the WANAKOME trademark.

7(b)–Passing Off

A section 7(b) infringement happens when another brand tries to pass off its goods as that of another established, registered, and trademarked brand. Wanakome Inc. pointed out similarities between the LIO brand and Wanakome, brought forth evidence showing both brand-related hashtags represented on the same posts on social media, and post-dispute emails where Eric Martin was representing himself as a maker of Wanakome to customers. Wanakome Inc. also alleged that Park Enterprises and Kara Martin were passing themselves off as still affiliated with Wanakome by advertising and selling Wanakome goods on their websites and that any sales were unauthorized. 

The Court did not find a 7(b) infringement. The Court did not think using LIO and Wanakome hashtags on the same posts was an attempt to confuse the brands because separate hashtags were used, showing the brands as distinct entities. Additionally, the Court disagreed that Park Enterprises represented the LIO products as related to Wanakome products because LIO products had distinct designs. Finally, the Court noted that Park Enterprises and Kara Martin were allowed to advertise and sell their remaining stock of Wanakome goods. Following the dispute, Eric Martin did not represent himself as being involved with Wanakome Inc. in emails for long; thus, the Court did not think there were any resulting damages.

7(c)–Substitution

A section 7(c) infringement occurs when someone orders a good advertised as one brand and receives a different brand. Wanakome Inc. again pointed to Eric Martin’s emails, in which he represented himself as being involved with Wanakome to customers. 

The Court did not find the email evidence sufficient grounds for a claim of substitution because the subject of the emails and the products offered were LIO goods. The emails were not attempting a “bait and switch.”

7(d)–Misuse

​Section 7(d) is infringed when a party misuses another’s trademarked goods in such a manner as to elevate the perceived worth of their goods in the minds of consumers by association. Wanakome Inc. again raised Eric Martin’s emails to customers and the social media hashtags. Wanakome Inc. also pointed to a social media post where a customer compared the LIO and Wanakome goods and evidence that Park Enterprises sold LIO goods at 20% less than Wanakome goods.

The Court did not find any of the evidence to be compelling attempts to associate the two brands. The Court highlighted that since LIO sold at a lower price and targeted a younger demographic, it would be hard to say that LIO represented itself as a higher-quality product.

Copyright Validity

Wanakome Inc. also argued that the copyright of Park Enterprises’ “wanakome mountain” (Canadian Copyright No. 1170106) was invalid. The Court examined the evidence that Kara Martin created the logo for Park Enterprises Worldwide Inc. Additionally, the Court noted that Park Enterprise was allowed to file the copyright on behalf of Kara Martin. The Court found the copyright to be valid. 

The court decision can be read here.