In Stenner v. ScotiaMcLeod, a recent decision of the British Columbia Supreme Court, the Plaintiff successfully established that his surname used in association with financial services was a valid trademark and that the Defendants’ use of the name constituted passing-off.
The Plaintiff was a well-known Vancouver-based investment advisor and financial consultant with his own radio show. He worked under contract with the National Bank where investment and financial services were provided by a team that included his daughter and her husband. The daughter’s surname was Stenner-Campbell. In 2002 the Plaintiff negotiated unsuccessfully with his daughter to sell her his book of business. That book of business was instead sold to another National Bank employee for $61 million. The daughter and her husband then joined ScotiaMcLeod, a rival investment firm, began soliciting clients and started a radio show using the Stenner name. The Plaintiff then commenced an action against his daugther and her husband.
Among other relief, the Plaintiff claimed breach of fiduciary duty and passing-off and sought an injunction to prevent the Defendants from using STENNER with any of INVESTMENT, TEAM or FINANCIAL. The Plaintiff had successfully applied to register the STENNER trademark, but the application was only filed after the lawsuit was commenced.
The Court concluded that there was no breach of fiduciary duty because the daughter in particular was not a key employee of the Plaintiff’s team. Moreover, under British Columbia law, a former employee could solicit customers so long as he or she did not take and use confidential information or trade secrets of the former employer.
However, the Court also concluded that passing-off was established since the Defendants’ use of Stenner-Campbell in print and on radio created confusion, depending on the context and a person’s prior experience with the financial world. There was a benefit to be derived by the Defendants’ use of the name and the daughter did nothing to avoid confusion by also using her given name, Vanessa. However, with regards to damages, the Court reasoned that because the passing-off due to confusion with STENNER had diminished greatly over time, 10% of the Defendants’ gain to trial, and 5% for a further five years after, was the appropriate measure.
The Court also issued a permanent injunction with regards to the Defendants’ use of the domain name www.stennerteam.ca and required that domain name to be transferred to the Plaintiff. However, no injunction was issued regarding the use of STENNER with INVESTMENT, TEAM, or FINANCIAL, since it would be too broad.
The decision has now been appealed to the British Columbia Court of Appeal and we will report if there is a further ruling.