Ridout & Maybee LLP client U-Box-It wins trademark battle in David v Goliath Case22/08/2017
In a decision rendered at the Federal Court of Appeal on August 15th, 2017, family-owned business U Box It claimed a victory over American giant U-Haul International.
In U-Haul International Inc. v U Box It Inc., U-Haul was denied registration for two trademarks due to their resemblance to the U Box It brand. In October 2009, U-Haul applied to register four separate trademarks of which only two were accepted by the Canadian Trademark Office:
- U-Haul U-Box (Accepted)
- U-Haul U-Box We-Haul (Accepted)
- U-Box (Denied)
- U-Box We-Haul (Denied)
U Box It had registered its trademark, U BOX IT, in February 2008, which had been in use two years prior to registration. Due to the similarity between the two trademarks and their respective services, U Box It argued that the names had the potential to confuse consumers.
Based out of the Greater Toronto Area, U Box It provides recyclable, lightweight containers to consumers for the purposes of junk removal. The bin is delivered to the consumer, who fills it, and is then picked up by U Box It for delivery to a landfill. The Court found that U-Haul’s provision of containers for moving and storage under their U BOX trademark presented a risk of confusion with U Box It’s trademark.
Despite U-Haul’s claims that there was a contrast between both services, Justice Woods ultimately disagreed with the appellant, U-Haul.
The litigator on behalf of U Box It, Matthew Norwood of Ridout & Maybee LLP, comments on the decision:
“The Court’s decision is reassuring to me, as it should be to any small or local business operating in Canada. The Courts have reaffirmed the principle that any new entrant to the market, no matter how large, needs to respect the existing trademark rights of businesses whose continued existence depends on the goodwill and reputation they’ve built up around those marks.”
Ridout & Maybee LLP would like to extend our congratulations to U Box It.
For more information, please visit the BNN article “Waste management company U Box It wins trademark battle with U-Haul”