Fight over polar bear trademark marring
North's hard-won diamond industry
Updated: Sun, Nov 05 03:09 PM EST
(CP) - The Great Canadian Polar Bear is at the centre of another image fight - this time
between the government of the Northwest Territories and one of the diamond
manufacturers it worked so hard to bring north.
The territorial government has filed a lawsuit in Federal Court to strip Sirius Diamonds Ltd.
of its right to inscribe the bear's image on the rim of diamonds it manufactures at its
Yellowknife plant, as it has been doing for two years.
"The government realized a little late in the day it's been a wonderful marketing tool and
they want to control it," said Sirius president Stephen Ben-Oliel from Vancouver.
"It's just theft and there's no other way I can look at it."
The Canadian Intellectual Property Office database lists 81 polar bear trademarks on
everything from taro root starch to winter boots.
In the Sirius-N.W.T. conflict, the government got there first. It filed an application for its
three-legged, east-facing bear on Mar. 29, 1968.
However, all trademark applicants must list the mark's intended use and the N.W.T. 1968
polar bear trademark was specifically linked to tourism promotion.
Sirius, on Nov. 20, 1998, filed the first polar bear trademark intended for diamonds. It also
had three legs and faced east.
"As soon as we became aware that Sirius was using the trademark we told them to stop,"
said Bob McLeod, deputy minister of resources, wildlife and economic development.
McLeod says the N.W.T. wanted to use the bear for a government certification program
on diamonds mined, cut and polished in the North. Canadian stones, he says, could
command a price premium because of their high quality and the fact they're untainted by
human rights concerns.
Sirius was willing to change its mark to a four-legged, west-facing bear to avoid
confusion with the government's 1968 trademark, said company lawyer Susan Ben-Oliel.
But it wanted exclusive diamond rights for the bear.
However, Sirius's trademark had only been applied for, not registered - a process that
takes up to 18 months.
On March 25 last year, the government applied for official mark status for the bear. An
official mark is the insignia or emblem of a public body, and it would cover all possible
uses.
Because Sirius's bear isn't yet registered, the government's official mark application could
trump it.
"The official mark application could be used to prevent the trademark from being
registered," said Lisa Power of Industry Canada's Trademarks Branch.
Stephen Ben-Oliel calls the government's attempt to make the bear available to all
northern diamond manufacturers "nationalization" of a brand name his company has spent
about $1 million to create.
"When they realized there was a great deal of commercial interest in this mark it became
expedient to claim it."
McLeod holds the territorial government has used the polar bear for as long as it has
existed.
"How can we steal our own trademark?" he asks.
But both acknowledge it's a setback for a growing industry the N.W.T. worked hard to
bring north.
"This is a brand-new industry to Canada," says Ben-Oliel. "Here's the first company trying
to get into the business and there's been nothing but obstacles."
McLeod says Sirius is holding up the entire diamond manufacturing sector by refusing to
allow the certification program to use the bear.
"It's causing irreparable harm," he said.
Federal Court is scheduled to hear the case on Jan. 12.
The fight is reminiscent of an earlier dispute between the N.W.T. and the then-unformed
eastern Arctic territory of Nunavut.
The N.W.T. wanted to keep its distinctive polar-bear-shaped licence plates despite
Nunavut's claim most of the bears actually live within its boundaries. The territories
eventually agreed to both use the plates - they just have to be different colours. |
