Artists-Who-Use-Brushes Ten-Plus-One
Slaw readers may have seen the article in the Tuesday Globe and Mail pointing out that Toronto art dealer Lynda M. Shearer holds a trade mark in the phrases “painters eleven” and “painters 11” set to be registered today. The phrase, however spelled, has been used to describe the group of artists that included Harold Town and Jack Bush ever since it was formed in 1954. (The first Globe and Mail reference I could find was on February 13, 1954: “Abstract art claims major attention in the Toronto art scene this weekend, and a new group of abstractionists called Painters Eleven enters the field” etc.) Now, however, Shearer and her husband business partner, are said in the Globe story to have told Iris Nowell, Harold Town’s companion, that her forthcoming book, Painters Eleven: The Wild Ones of Canadian Art, is in violation of their mark.
I don’t know enough about trade marks to know whether and when it’s possible for entrepreneurs to cloak themselves in a word or phrase that until then was fairly common coin such that it can become their trade mark, and I would be interested to learn what our IP experts out there think about this. It would be curious if one could simply appropriate terms like “cubist” or “kitchen sink school” or “angry young men” that have been applied to groups of artists of one sort or another. It might make sense if one had a more-or-less exclusive right to deal in the group’s output, but that’s not the case with the Shearers.
As the Globe article points out, it’s possible that it could be attacked as not being distinctive. The trade-marks examiners only look at existing registered marks, and will reject an application if it is confusing with an existing registered mark. Its possible to obtain a registration, but then later lose it if someone can show it is confusing with a pre-existing unregistered trade-mark, or a trade-name. The simplest way for someone to do that is to oppose it within the 60 day publication period, but it is also possible to attack it later in court.
I’m standing by with my “School of Hard Knocks” application if that one goes through. ;-)
The Trade-marks Act provides that a trade mark may be declared to be invalid, pursuant to s. 18, if it was not registrable at the date of registration, or if the trade mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced.
A brief internet search revealed a Canadian Encyclopedia entry, a Wikipedia listing, and a Centre for Canadian Contemporary Art listing for Painters Eleven. I would argue that the trade mark PAINTERS ELEVEN / PAINTERS 11 is clearly descriptive, when considered in the context of the art-related wares and services, of art created by the “Painters Eleven”, and if it is not, then the mark is misdescriptive.
As a previous poster noted, I also agree that a distinctiveness argument could also be made.
Given the information I found on the internet, I am surprised that the marks were successfully registered. Now that they are registered, an argument could be made that the marks are vulnerable to expungement. It’s an interesting issue.
I will watch this one closely if it ever gets to court.
I agree that the mark is clearly invalid as not distinctive and in the language of the Act, descriptive or deceptively misdescriptive. To use an old law Latin term, it’s bogus.
I suppose someone could call the registrants’ bluff and let them sue, then defend by attacking the mark. But would the ensuing costs award actually defray all the expenses of the litigation? I don’t know if Federal Court has a ‘full indemnity’ costs award available – punitive damages would be appropriate here.
Isn’t another issue here the use of trademark?
If the book is about painters eleven and doesn’t claim to one of their works, the book would be no more a violation of trademark than a blog post titled Canadian Art Group doesn’t seem to understand intellectual property law.
The Globe and Mail is reporting now (evening, March 24) that the Shearers are prepared to drop the trademark idea. John Shearer says they’re “willing to transfer the trademarks ‘Painters Eleven’ and ‘Painters 11′ to a Canadian public cultural institution at our expense and without restrictions. This would ensure no one else would apply in the future to use the trademarks … in a commercial manner.”