Tag Archives: trademarks

CBC jumps into semantic nightmare with “ICI” debacle

I thought nothing short of an alien invasion would unite the country. Heck, even then I’m sure the PQ would blame the federal government. But the CBC managed to do so last week when it announced that it was rebranding all its French-language services as “ICI”.

But the move has been so universally condemned, from the left, from the right, from its enemies and its friends, that I feel the urge to play contrarian and find some reason to support it. But I can’t.

The reasons to dislike it just pile up:

  • It’s confusing. Are they changing the name Radio-Canada? No. Except yes. They’re not changing their name, but just adopting a new “brand identity”, or using a “term”, or “denominator”. Just the list of synonyms for the word “name” they used (including the word “name” itself) created needless confusion. Even CBC and Radio-Canada journalists couldn’t figure out what “ICI” was, exactly.
  • It’s expensive. This rebranding exercise cost $400,000. You can see that as a tiny part of the corporation’s $1-billion annual subsidy from the Canadian government, or you could see that as a handful of well-paid full-time jobs for a year. Rebranding is an expensive endeavour that does little to further the CBC’s mandate.
  • It’s unnecessary. The closest thing I got to a reason for this whole thing in the first place is a video (now deleted) in which someone put a confused look on their face when explained that “Radio-Canada” means both radio and television. I get that, in a sense. You’ll recall that Télé-Québec used to be called Radio-Québec. But is this really a problem for a brand that’s existed for 75 years? Does anyone who lives in Canada and speaks French actually get confused?
  • It’s consultantism at its finest. The CBC loves consultants. People who tell them that newscasts have to look a certain way, or that Peter Mansbridge should stand at all times. Some consulting is good. You want to focus-group television shows or expensive concepts before putting them into motion. But consultants are also good at convincing people to buy things they don’t need. I don’t know if that happened in this case, but it certainly gives that impression.
  • It’s abandoning a strong brand. Rebranding is something you do when your brand isn’t working. Maybe you’re involved in a scandal, or your name doesn’t reflect what you do anymore, or it’s not politically correct. But Radio-Canada is a very strong brand. People know what it is and expect good things from it. Why would you mess with that? Even the federal government got involved to complain.
  • It’s anti-patriotic. Fuelling the exaggerated notion that Radio-Canada is filled with separatists (as if half of Quebec wasn’t), cutting “Radio-Canada” in favour of “ICI” has been seized by some in English Canada has a political move. “ICI” is also being seen as reinforcing the Quebec-centric view of Radio-Canada by groups that feel the corporation all but ignores francophones in the rest of Canada.
  • It’s a generic word with little meaning. The Abbott and Costello routine from Jean Lapierre and Mario Dumont might be a caricature of the problem, but there’s a very serious lack of meaning in the term “ici”. It’s a generic word, an adverb, and they’re trying to use it as a noun. “ICI” has been the name of a bunch of things, including a weekly alternative newspaper in Montreal. “ICI Montréal” was even registered as a trademark by Télé-Métropole, which is now TVA, in 1985.

But the biggest problem with this rebrand is this: It’s screwing the little guy.

Sam Norouzi

 

Here’s that little guy. His name is Sam Nowrouzzahrai, but he does business as Sam Norouzi because he wants to save people the trouble of always looking up how to spell and pronounce his name. He’s the man behind a new ethnic television station in Montreal. It’s a mom-and-pop shop, owned by his family and run as a producers’ cooperative. He’s not looking to get rich off of this, just find work for some ethnic broadcasters and bring local ethnic television back to one of Canada’s most diverse cities.

He wanted to call the station International Channel/Canal International, or “ICI” for short.

As I explain in this story in The Gazette, Norouzi did his homework, applying for a registered trademark and waiting for it to get approved as the CRTC application process followed its course. Now, weeks before the station is set to go on the air, he has to deal with the CBC’s lawyers who are trying to take his name from him. And while he has a legal team to deal with that, it’s taking up a lot of his time too. “There’s not a day that goes by that there’s not an issue I have to deal with” involving the case, he said.

I first wrote about this story in March, but now Norouzi has decided he’s ready to play offence in his David-vs-Goliath battle. Articles in the Journal de Montréal, La Pressethe Globe and Mail, the National Post, even the New York Times. An interview on CBC Radio’s As it Happens. An angry column from Sophie Durocher. And while he told me back in March that he didn’t have the funds to take this matter to court, he now says he’s ready to fight.

“We have full rights to go forward with the name and we intend to do so,” Norouzi told me. “We will defend ourselves. For us it’s really a question of principle.”

CBC by a technicality

So what kind of case does the CBC have here? Can they really force Norouzi to give up his name?

Companies don’t have to register their trademarks for them to be legal. They just have to use them. Same thing with government bodies and their “official marks” according to the Trade-marks Act. But it helps. And Norouzi’s application for ICI came a year before CBC’s 31 applications for ICI-branded services. (The only CBC mark that predates Norouzi’s is one from 1969 for “Éditions Ici Radio-Canada”.)

I spoke with Pascal Lauzon, a lawyer and trademark agent with BCF. He said most of the case is “very debatable on both sides.” He pointed out that the registrar of trademarks looks through the database when a trademark is applied for. The process also includes a two-month waiting period so opponents can file oppositions to proposed registrations.

But Lauzon also said that there’s a five-year period during which someone can apply to the federal court to expunge a trademark.

Obviously not in a position to prejudge a case like this, Lauzon said the CBC has a strong case, not so much because it can prove it used the name first, but because of what amounts to a technicality.

Part of the trademark registration process is the filing of what’s called a “declaration of use.” This tells the Canadian Intellectual Property Office that you have actually used the trademark you’ve applied for on a good or in connection with a service. Norouzi filed this on Aug. 20, 2012. But his station wasn’t on the air at that time. We didn’t even know it existed because the application for it wasn’t published until a month later.

The CBC alleges in its lawsuit that, because Norouzi did not appear to be actually using the trademark, his declaration of use was “materially false.”

That, Lauzon said, is enough to have the entire trademark registration thrown out. If that happens, Norouzi would have to file for a new one, but that would put his application behind those 31 marks of CBC-Radio-Canada, and would weaken his case considerably.

“He should have waited” until the station was on the air, Lauzon said. He had three years to file a declaration of use, and waiting would not have made his initial filing date of August 2011 any less valid. “If he had waited, he would be in a much better position,” Lauzon said.

An amicable solution is the best solution

There is another way for this to end: The CBC could see the error of its ways and abandon the whole “ICI” plan entirely. Or it could offer to pay the costs associated with Norouzi’s station taking another name. I don’t know if either of those are likely.

Norouzi tells me he has had no communication with the CBC other than through its lawyers, who first contacted him last November complaining about possible confusion. (Norouzi dismissed those claims since they came long before anyone had any idea that Radio-Canada would be rebranding.) The CBC won’t comment except through written communication that goes through its legal department. Which means I didn’t get a response from them by press time. (I’ll update this post with what I hear back.)

The CBC has already started to back away from ICI. On Monday, president Hubert Lacroix apologized for the “confusion” and announced that some services, including the main TV and radio networks, would retain the Radio-Canada name. You can see a full list here (PDF). Names like “ICI Radio-Canada Télé” and “ICI Radio-Canada Première” sound like awful compromises, taking names that were long and making them even longer.

This backtrack was after days of trying to re-explain a move that should have been self-explanatory.

It hurts to throw away a $400,000 project. But sticking with a bad idea isn’t a better option.

UPDATE: I asked for additional comment from CBC about this case. Hours after the request, I was asked to submit written questions. Almost 24 hours later, I finally got this as a response from Radio-Canada’s Marc Pichette:

In response to your questions sent yesterday (and I apologize for the delay), the term “ICI” has been closely tied to Radio-Canada’s identity for over 75 years. That it has risen to increased prominence recently is only a reflection of the close association our audience makes between that word and our brand.

Confusion is in no one’s interest. That’s why the matter to which you refer is part of an ongoing legal process which is before the Federal Court. I hope you will understand that I cannot comment on the specifics.

An Oasis of bad publicity

Guy A. Lepage et al > Oasis

So here’s the deal: A Lassonde, the company that makes Oasis fruit drinks, is apparently sensitive to other companies using the name for consumer products, even when there’s no risk of confusion with a bottle of juice.

Saturday’s La Presse carried the story of its legal battle with a woman, Deborah Kudzman, who makes olive oil soaps called Olivia’s Oasis. Lassonde sued Kudzman, arguing that her product’s brand was confusingly similar to their Oasis juice brand, even though one’s a juice and one’s a soap, and they have nothing in common other than a word.

Kudzman not only won the case (since, among other things, “oasis” is a word in the dictionary and there are about a billion commercial products with that word in their name), but the judge ordered Lassonde to pay Kudzman’s legal bills, which had surpassed $70,000, she told La Presse.

But Lassonde appealed that part of the judgment, arguing that its lawsuit wasn’t abusive. It won that case, and was relieved of the obligation to pay Kudzman’s legal bills. Kudzman, convinced that Oasis knew from the start that it wouldn’t win its case and sued just to try to scare her away, went to La Presse. The story centred mostly on Kudzman, including only a brief comment from Lassonde saying its lawsuit was justified.

That might have been the end of it, a story in the newspaper about a big company screwing a small business, but then social media took over. Bloggers started writing about it, influential personalities like Guy A. Lepage were talking boycott, and Oasis’s Facebook page was flooded with negative comments. La Presse had a followup about the online reaction.

Then, a change of heart. In the evening, as Montrealers were focused on a meaningless hockey game, the company announced on its Facebook page that it would compensate Kudzman for her legal costs. (The post has disappeared, though I don’t know if that’s because they deleted it or for some other technical reason. Their official Twitter feed linked to the post and La Presse quoted from it.)

It’s surprising. First, that everyone would pay so much attention to this story. Second, that it would provoke a response on a Saturday evening during a long weekend. Third, that in a matter of hours a company would decide to make a PR decision that would cost them almost $100,000. And finally, that they would just give her the money after having gone through the trouble of an appeal process in order to not give her the money.

The cost of doing PR

The basics of this story happen pretty often. When the media publish a story about a big company screwing someone (usually a customer), the response tends to be to compensate that person with a refund or anything else that would make them satisfied. Whether the company was right or wrong immediately becomes irrelevant. This isn’t a customer retention issue, it’s purely a public relations one.

But these kinds of stories are usually about customers with $100 phone bills or who bought something at a store that didn’t work. Fixing those problems cost far less than the free advertising they get from being seen as a good corporate citizen on the local news. (It works best when some slick fact-play tries to turn it into some sort of misunderstanding, as was the case in Oasis-gate.)

Rarely do we see such a huge monetary settlement offered so quickly.

I can imagine some self-appointed social media marketing experts salivating at the thought of offering their two cents on the matter (oh wait, here they are). It tends to happen after high-profile cases like this. They talk about the mistakes the company made and pretend they would do things insanely better if only they were in charge. (In what I’ve read so far, the only concrete thing someone has suggested they should have done differently is to take minutes instead of hours on a holiday weekend to decide to spend almost $100,000 on their opponent’s legal fees because people complained on their Facebook page.)

What went wrong here isn’t that Lassonde had bad PR working for it. Its problems were in a conference room, either in the form of its lawyers or its executives (or both).

The real test of whether Lassonde has learned its lesson is whether it will go after other companies that dare use Oasis in their product brand names. Its conciliatory statement implies that it won’t (well, actually it implies that it never did, in one of those amazing doublespeak moments).

Even if Lassonde does change its legal strategy, there are plenty of other companies out there whose greed or fear has eroded their common sense.

UPDATE (April 11): Some people in the communications industry have pointed out that the major error on Lassonde’s part is that it didn’t consult with PR people before engaging in a legal battle that could have put them in hot water. It’s an interesting point. They could have seen this coming and prepared for it, either by not launching the lawsuit in the first place or by having a communications strategy that would mitigate any damage.

Whether that would have made a difference is hard to see. Any lawsuit can make you look bad when you’re a big (or even medium-sized) company going after a mom-and-pop shop. And it’s almost impossible to predict what kind of story will get traction in social media.

Meanwhile, Patrick Lagacé has a story in La Presse about another company, making a cleaning product called Bioasis, that was forced to shut down because it couldn’t handle the cost of renaming itself or fighting Lassonde in court. Lagacé uses this case, which dates from 2003, to call Lassonde a bully.

Lassonde responds in a new blog that things changed in 2004 when it brought its legal department in-house. Its president also says that the Olivia’s Oasis case was the only one that went to court over trademark issues, and that its settlement options include a free license to use the trademark, which allows Lassonde to protect its rights (trademarks lose their value legally if their owners don’t fight for them) without punishing a smaller company.