ARTICLE · 21 MAY 2018

The Importance Of A Coordinated Approach To Using And Registering Trademarks

Goldman Sloan Nash & Haber LLP

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American Express clears, registers, maintains, licenses and defends the trademarks of the American Express group of companies in Canada.

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A recent decision of the Federal Court deals with a battle between American Express Marketing and Development Corp. (American Express) and Black Card, LLC (BCL) over who has the right to use the trademark BLACK CARD.

The Facts

American Express clears, registers, maintains, licenses and defends the trademarks of the American Express group of companies in Canada. American Express asserted that BLACK CARD is an unregistered trademark sublicensed to the AMEX Bank of Canada and used in connection with a premium credit card known as the Centurion card. The card is black in colour.

BCL offers credit card and concierge services to members, principally in connection with entertainment, travel and business. BCL's credit cards are also black in colour.

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