A trademark battle between two legal non-profits over the name Lawyers Without Borders – itself borrowed from the international aid organization Doctors Without Borders – appears to be over after the U.S. group abandoned the court fight this week. But the two groups still seemed to be at odds over what they will call themselves.
The dispute pitted an American group, Lawyers Without Border Inc., based in Hartford, Conn., against the Quebec City-based wing of an international group headquartered in Belgium, Avocats Sans Frontières, and known in English as Lawyers Without Borders Canada.
While the Canadian organization is much more active in Canada, both groups send volunteer lawyers to developing countries to help establish the rule of law.
After a lengthy feud, the Canadian group won a Federal Court judgment, with reasons released in January, that expunged the U.S. group’s trademark here on the name, ruling that the Canadians had used the name first. This week, the U.S. group withdrew its bid to appeal the decision after reviewing it.
But the U.S. group’s Canadian trademark lawyer, Michael Crinson of Dimock Stratton LLP, said Thursday that the group still planned to use its existing name for its Canadian activities.
“We don’t believe they have to use a different name in Canada,” Mr. Crinson said.
In voiding the trademark, the Federal Court decision says the U.S. group’s founder, Christina Storm, provided “significant contradictory evidence” on the date of her group’s first Canadian use of the name and its work in Canada. Mr. Justice François Lemieux of the Federal Court also said the U.S. group’s “evidence of use of the mark in Canada is extremely poor.”
Pascal Paradis, the executive director of Lawyers Without Borders Canada, said he was hoping to put the litigation behind him to focus more on the group’s human rights work. He said the U.S. group’s use of the name had caused “confusion” for donors, and that his group now planned to go ahead and finally trademark its name.
He said his group would take no further action against the U.S. group, as long its continued to have little or no presence in Canada. But if it were to ramp up its activities here, he said Lawyers Without Borders Canada might have to act: “If they would be inclined to have greater use or substantial use of the mark and it were to create confusion ... we would be forced to consider out options.”
Both names were inspired by Doctors Without Borders, founded as Médecins Sans Frontières (MSF) 40 years ago in France. MSF itself has taken or threatened legal action against some groups using the “without borders” suffix that have proliferated in recent years. But MSF was not involved in this fight between lawyers’ groups.
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