CBC’s ill-fated “Ici” re-branding may be getting clawed back, but that’s not stopping Radio-Canada from seeking a trade-mark expungement against current broadcaster and “Ici” trade-mark holder, Sam Nozouri.
Background
CBC’s French division Radio-Canada rolled out its “Ici” branding to much criticism, ranging from mocking to anger, because the re-marketing downplayed Radio-Canada’s main name and state broadcaster status. In fact, the new brand largely eradicated the Radio-Canada affiliation.
Radio-Canada quickly backtracked on the brand update, much to the satisfaction of Heritage Minister James Moore, whose portfolio responsibility includes Radio-Canada. The new, new brand will clearly include both “Ici” and “Radio-Canada”.
“They made the right decision in going back,” Moore told news outlets after the announcement. “Maintaining a clearly Canadian brand for Canada’s broadcaster is the right choice.”
The marketing misstep even made it into the New York Times.
Legal implications
But there’s a second legal layer to the problematic re-branding. Montreal broadcaster Sam Norouzi obtained a licence from the Canadian Radio-television and Telecommunications Commission (CRTC) for the multi-language channel “ICI – International Channel/Canal international” in 2011. Similarly, Norouzi legally registered the trade-mark “Ici” with the Canadian Intellectual Property Office (CIPO) and received an official CIPO trade-mark certificate in September 2012. Norouzi originally planned to to launch his channel this coming fall.
But there are holes in Norouzi’s legal argument, as trade-mark lawyer Pascal Lauzon told the Montreal Gazette. Firstly, a trade-mark doesn’t need to be registered to be recognized in Canadian law. Secondly, a trade-mark may be expunged through sections 45 and 56 of the Trade-marks Act up to five years after CIPO registration. Thirdly, a paperwork technicality – wherein Norouzi informed CIPO in August 2012 that he had already started using the name when in fact the station had not yet launched – may also leave him legally vulnerable.
“If you file a faulty or untrue declaration of use, it can invalidate the entire registration,” Lauzon told the Gazette. “If he had waited, he would be in a much better position.”
Spokesperson Marc Pichette states Radio-Canada has a history of “Ici” use akin to an unregistered trade-mark dating back to the 1930s. The broadcaster’s official internal magazine was called “Ici Radio Canada” from 1966 to 1985 and Radio-Canada registered a semi-similar “Éditions Ici Radio-Canada” trade-mark in 1969 for a failed publishing wing.
“It is more or less universally known in the French market and has, in fact, become almost as iconic an identifier as Radio-Canada itself,” Pichette told the National Post.
Radio-Canada has not requested an injunction, but has requested that Norouzi stop using “Ici” and destroy all materials with the name, or else pay damages “which may exceed $50,000.” No court date has been set.
Analysis and opinion
It sounds like Radio-Canada has a decent case when you combine the historical use of “Ici” with the yet-unmet statute of limitations for federal trade-mark expungement.
That said, it is my opinion that Radio-Canada is still making a mistake.
As I’ve argued before, sometimes exercising a legal right doesn’t translate well into the court of public opinion. And the court of public opinion is an arena that Radio-Canada cannot ignore, especially on the heels of the re-branding outcry.
Canadians, the Minister of Heritage, and the broadcaster itself have loudly declared that “Radio-Canada” is the brand, which would make “Ici” more a slogan than anything else. Considering this, I propose that there is more than enough room in the Quebec market for a Radio-Canada broadcaster with an “Ici” slogan and an ICI broadcaster with or without any additional slogans.
This is particularly true when you consider market segmentation. ICI, the broadcaster, intends to focus on “allophone” content – primarily non-English, non-French programming in more than a dozen different languages. This is a market entirely discrete from Radio-Canada’s content, which is exclusively French.
At its root, a trade-mark is a tool that provides legal rights to the holder against others who seek to diminish the value of the brand trade-marked by passing themselves off as a similar or related entity.
I don’t believe the “Ici” slogan is closely affiliated enough with the Radio-Canada brand to warrant copycats. Radio-Canada’s use of “Ici” has been inconsistent, as indicated by Pichette’s dated references. I lived in Quebec for five years and have consumed much Radio-Canada content throughout my life. At no point did I feel “Ici” was a core part of the branding.
And I don’t believe ICI is attempting to be a copycat. ICI stands as an acronym for a full channel name that embodies its unique multi-language offering; this is indicative of a good faith trade-mark registration.
Radio-Canada may win their expungement case, but not without accumulating industry enemies and negative public sentiment during an already tumultuous time. Ici Radio-Canada Télé and ICI – International Channel/Canal international can live in harmony. And so they should.