Two hardwood flooring companies located a mile apart in Richmond, B.C., recently went to court over the brand name "Woodpecker," according to a story in The Vancouver Sun. Woodpecker Hardwood Floors sued Wiston International Trade Co. for branding a line of hardwood flooring with the name Woodpecker.
Woodpecker Hardwood Floors, which has been in business since 2000, does not have a trademark on its name, and Wiston did trademark the name of its flooring line in January; however, the Supreme Court of British Columbia granted Woodpecker an injunction that prevents Wiston from marketing hardwood flooring products using the name Woodpecker until the trial of the matter.
"While registration of a trademark provides a number of advantages, including nationwide enforceability, it may not be an ironclad guarantee of an exclusive right to use it," Mark Fancourt-Smith, partner at Canadian law firm Lawson Lundell, wrote in The Vancouver Sun. "Registering an identical, or very similar, name as a trademark where the name is already in the marketplace for similar goods or services can leave a trademark-and the holder-vulnerable. This is particularly so where one knows about the existing, unregistered, mark, as in this case, where the Court found that Wiston knew of Woodpecker's brand before it chose to register 'Woodpecker' as a trademark for its own products."
