CBC challenges private broadcaster in court over ICI brand

CBC/Radio-Canada is taking private broadcaster International Channel/Canal International (ICI) to court over competing claims to the ICI brand name. CBC said on Wednesday it plans to change the name of its French-language broadcaster, previously Radio-Canada, to ICI. Radio-Canada has used the ICI acronym—also a word that means “here” in French—for more than 70 years in its marketing materials, according to the public broadcaster. International Channel has been using ICI to market an unlaunched multi-ethnic station in Montreal that received a broadcast licence from the CRTC in December. Sam Norouzi, International Channel’s vice-president and general manager, said in a phone interview Friday that CBC filed an application with the Federal Court to prevent International Channel from using the ICI name. He said the company, which has been using ICI in marketing promotions this spring, has no intention of giving up the use of the name. “We’re speaking to our legal team. We’re very confident about our chances,” Norouzi said. Norouzi said International Channel submitted a trademark request for the name with the Canadian Intellectual Property Office in August 2011 and received a certificate for it last September. The company used the name in its broadcast application to the CRTC last February, he said, and received a CRTC licence to operate with the ICI brand name. “In our minds, we’ve done everything by the book,” he said. CBC spokesman Marc Pichette said in an emailed statement that CBC has used the “ICI Radio-Canada” trademark in its branding and marketing materials since the 1930s. He said the public broadcaster also produced a magazine called Ici Radio-Canada from 1966 to 1985, and obtained a trademark to the name “Éditions Ici Radio-Canada” in 1969. “ 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 said in the email, in which he used both "Ici" and "ICI" to describe CBC's marketing materials. Pichette said CBC is concerned that International Channel’s use of the ICI name could cause confusion between the new channel and a CBC marketing slogan in the French-language market. “It is not only a question of trademark registration but of precedence for the use of the brand Ici,” he said. Pichette declined to say whether CBC has used the word on other marketing materials and not only in conjunction with Radio-Canada. He also declined to speak further about the lawsuit. Radio-Canada said in a release June 10 that it is not changing names. It said Radio-Canada TV will be branded as "ICI Radio-Canada Télé," la Première Chaîne as "Radio comme ICI," and its website as "ICI Radio-Canada.ca." "We apologize for the confusion that was created in people's minds when we introduced the term ICI as a common denominator for all of our platforms. Our intention was never to distance ourselves from Radio-Canada and everything it represents," CBC/Radio-Canada president and CEO Hubert Lacroix said in a statement. " However, Radio-Canada has heard the message loud and clear that the public has been sending us over the past few days. We recognize people's powerful connection to everything that Radio-Canada stands for." Norouzi said CBC first raised the issue with International Channel in a letter on Nov. 30, 2012. He said he received legal documents in March informing him that CBC was taking his company to court for an injunction that would prevent the company from using the name. “The case is pending right now. They have requested an injunction but there’s no decision that has been rendered yet,” he said. The case, he said, is a distraction as International Channel prepares to launch its service later this summer or fall. The lawsuit is a drain on the company’s financial resources, he said, and could mean further costs if an injunction is ordered. He said CBC is asking for damages, though he couldn’t say how much. “They’re coming after an upcoming multicultural station that’s just trying to get going, and they’re just draining our energy,” he said, adding that having to change its name “would be a huge setback for us.” Brian Gray, a trademark agent and senior partner with Norton Rose Fulbright in Toronto, said Canadian trademark law allows companies to claim a brand name by receiving a trademark or by regular use of the name. The first person or company to use the adopt a trademark, he said, has “priority” over the name. Companies with priority over a trademark may be called on to demonstrate that the public or consumers could be confused by alternative uses of the name. Norouzi said he does not think CBC should have the power to stop International Channel’s use of the name because it’s a commonly used word. Speaking generally and not about the CBC case, Gray said the use of a descriptive word in marketing materials does not necessarily mean it is accepted as a brand name. “Ordinary words can be confusing if they’ve achieved brand recognition,” he said. —With reporting by Nicholas Kyonka at nkyonka@thewirereport.ca and editing by Simon Doyle at sdoyle@thewirereport.ca

CBC challenges private broadcaster in court over ICI brand

Broadcast | June 7, 2013

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