In Miranda Aluminum v. Miranda Windows and Doors (2009 FC 669), the Federal Court denied an action for trademark expungement in a dispute between an aluminum-product retailer operated by a father and an aluminum-product installer operated by his son over the rights to trademarks based on the family surname. The Court held the son’s company, which held the trademark, had acquired enough distinctiveness through sustained use to defend against the action.

Miranda Windows and Doors (“Windows and Doors”), operated by the son Tony Miranda, was incorporated in 2005 as a successor to the son’s original corporation TMR, established in 1989. Windows and Doors applied in 2006 for a word mark (683429) and a design mark (683558) using the name “Miranda”, both of which were at issue in this case.

Miranda Aluminum, incorporated in 2000 and operated by the father Antonio Miranda, was the latest in a series of similar aluminum door/window companies operated by the father since 1976. The original Miranda Aluminum, established in 1976, became an inactive entity when the father was imprisoned in 1988 and was cancelled in 1990 when the father began working for the son’s business. In 1994, the father began another business, Miranda Home Improvements, but transferred it to another son, Edward, in 1997, before incorporating his current company.

Several grounds for the marks’ invalidity were advanced by the father, including his own prior use of a confusing mark and the inherent lack of distinctiveness in a mark based on a surname (especially one shared by competing parties). While marks primarily based on the names of living people, and marks that falsely suggest connections with living people, are both unregistrable under sections 12(1)(a) and 9(1) of the Trade-Marks Act respectively, section 12(2) provides an exception for marks that become distinctive through use.

Assessing the significant evidence of use submitted by the son, including customer testimonials, business awards, and advertising materials, the Court found the marks had become distinguishing for the son’s company’s wares. This evidence also supported a conclusion that no false connection to the father in the field of aluminum could reasonably be drawn – the son’s use of the mark had begun when the father had been imprisoned, and continued through a period where the father was working for him. Neither of these situations would mislead the public as to which of the Mirandas they were buying from.

Regarding prior use, the Court found section 17(1) of the Trade-Marks Act, while allowing the prior user of a mark to sue for expungement, required the prior user to establish the use and that they had not abandoned the mark. While the father submitted evidence of his own use, the Court found it lacked credibility. Prior to 2000, the evidence was scant, and post-2000 evidence suggested the father’s use was in a manner meant to confuse his business with his son’s. Given the abandonment of the mark during the period when the father was imprisoned, the Court found there was neither invalidating prior use, nor current use, sufficient to erode the distinctiveness of the son’s marks and dismissed the action.