James Adams of the Globe & Mail recently reported on a trademark dispute between art dealers in Toronto over the term PAINTERS 11. Apparently, the term PAINTERS 11 was used by a group of abstract painters that operated loosely under that name in Toronto from 1953-1960. Reading between the lines, I suspect that there was likely some dispute between art dealers as to which painters should be properly described as members of this group. One art dealer reportedly took it upon itself to register the term as a trademark in Canada so that it could attempt to control the use of the term – claiming that its goal was to rehabilitate the term by ensuring that it was used to refer to a fixed membership.
Unfortunately, it's not an uncommon occurrence for individuals to file applications to register generic terms. Although generic terms are not considered registrable at law, applications sometimes slip through the trademark office examination process. This is particularly problematic for terms that have not yet made it to a dictionary or atlas. Of course, when the registrant tries to enforce its trademark registration, the alleged defendants are outraged. Nevertheless, such defendants are often compelled to incur legal costs to resist infringement claims and/or seek expungement of the registration.
In this case, the outcry from the arts community was so extreme that the art dealer subsequently announced that it was cancelling its trademark application.
