It is not uncommon for owners to associate and identify their condominium with the marketing/project name the developer provided for the condominium project. Knowledge and use of the condo corporation’s legal name (for example, Toronto Standard Condominium Corporation No.1234) is often not used by owners. The author of this post sheepishly admits that he only recently learnt the legal name of his condo corporation, four years after ownership!
If a development is well marketed, the project name may have value and prestige associated with it. As such, some condo corporations either trademark the project name of the condominium or have it assigned from the developer.
While this may be prudent, a recent decision of the Canada Trade-marks Opposition Board (the “Trademark Board”) Toronto Standard Condominium Corp. No. 1864 (Re), [2019] T.M.O.B. No. 5061, highlights the importance of ensuring that the use referenced in the trademark application is consistent with the condo corporation’s current use.
In this case, the law firm Osler, Hoskin & Harcourt requested the Registrar of Trademarks to issue a notice under section 45 of the Trade-marks Act to TSCC 1864, the registered owner of the trademark SPIRE (the “Mark”). The Mark is registered for use in association with the construction and operation of a condominium building and sales of condo units.
The Registrar issued a notice requiring TSCC 1864 to show whether the Mark has been used in Canada in association with each of the services specified in the registration (namely, the construction and operation of a condominium building and sales of condo units) at any time within the three-year period immediately preceding the date of the notice and, if not, the date when it was last in use and the reason for the absence of such use since that date.
Based on affidavit evidence from a board member and manager, the Trademark Board was satisfied that “construction” encompassed maintenance and repairs of the common elements. Furthermore, as ownership of units changed in the normal course, the Trademark Board was satisfied that there were sales of the condo units. However, it is arguable that if the use specified in the trademark registration was more limited or specific to the development of the Spire condominium project, TSCC 1864 may have had a more difficult time maintaining its trademark over the Mark.
Two important takeaways from this case are:
1) If a condo corporation uses and values its marketing/project name, look into whether the name is subject to a trademark or available to be trademarked.
2) Even if a condo corporation has the trademark for the project name, ensure that its current/recent use is consistent with the services specified in the trademark registration.
