Barbie Anderson-Walley always knew that her risque clothing designs for ''bad boyz and girls'' would attract attention. After all, her Calgary store is filled with some pretty provocative stuff (think studded leather bras and red PVC miniskirts). However, the type of controversy she didn't anticipate was having the name of her five-year-old company, Barbies Shop, splashed across national newspapers. The reason for all the fuss: Anderson-Walley is involved in a legal battle over her store's name, which it happens to share with a certain generously proportioned blond doll.
Anderson-Walley is facing $20,000 in legal fees (and mounting) as she continues to fight a trademark-infringement lawsuit filed in the U.S. by Mattel. She's not alone: A recent spate of trademark suits in Canada have targeted small-business owners. Take the four owners of HaidaBucks, a small seasonal coffee joint on B.C.'s Queen Charlotte Islands. They racked up several thousand dollars in legal bills while fighting Starbucks, before the java giant dropped the suit in 2003.
"Even though I consulted a lawyer when I opened my shop five years ago, it looks like I'm out of luck," Anderson-Walley says plaintively. Her website ( http://www.barbiesshop.com) bears no resemblance to Mattel's--there's a lot of black, very little pink and blue, and to further avoid confusion, merchandise is divided into categories such as "corsets," "gothic" and "wet look." Registering a business name provincially or federally does not guarantee you exclusive usage, because the law is not about staking out a title, but about identifying the owners of a business. And although incorporating a business federally gives a business heightened name protection within Canada, a well-entrenched trademark trumps all. For instance, calling a pop shop "Kelowna's Coca-Cola" is a no-go, no matter where the business is registered or incorporated.
"The rules around names are not to stop you from doing business; they're about not stepping on the prior rights of other companies," says Daniel Urbas, a lawyer and trademark agent with Borden Ladner Gervais. "It's two-sided because it's meant to protect consumers so they know what they're getting and who they're purchasing from."
Urbas recommends consulting a lawyer or a trademark agent before registering a name and incorporating a business. Doing an extensive name search of existing businesses worldwide (including corrupted spellings--say, "E-Z Drive" instead of "Easy Drive") might save a lot of hard-earned dollars in the long run. "If someone's starting a business, they may not want to sink money into four hours of lawyer's fees," Urbas says. "But the simplest litigation starts at $15,000, so they should look before they leap." Lawyers' fees run from $100 to $600 per hour, depending on their level of specialization and experience. People should expect to pay a lawyer or an agent between $1,500 and $2,000 for basic trademark registration. That would include $550 in government fees. Still, the sky's the limit, depending on how technical an owner wants to get.
Urbas has some parting thoughts for creative thinkers and for those lacking deep pockets. "A few years ago, everyone was falling all over themselves to get dot-com and dot-ca names," he says. "But as the marketplace evolves, so does the capacity for people to come up with original titles. Remember: It's not like we're running out of names."