When Bill Lawson decided to name his Burnaby metal shop Metallica Manufacturing, he had no idea it would lead to years of legal headaches involving the heavy metal band with the same name.
"It was a very innocent choosing of such a name from a 12-year-old kid," Lawson said, amidst the loud clanging in his Burnaby metal shop.
According to Lawson, the company chose the name in the late 1990s, when the bookkeeper's young niece suggested the name Metallica. The heavy metal band with the same name was already around at that point, but "Metallica" seemed fitting for the Burnaby shop, which does custom metal work. The shop operated under the name for four or five years, Lawson said, but the legal troubles started when they tried to register a domain name online. That's when the band's lawyers started lobbying the shop to change its name.
"They just didn't want us to use the name," Lawson said.After several years of this, Metallica (the metal shop) filed a trademark application for the word Metallica on Aug. 9, 2008, seeking to use the name with the following services: custom metal fabrications, welding and machining.
On July 9, 2009, Metallica (the band) started an opposition proceeding in the Canadian Intellectual Property Office, in an attempt to stop the metal shop from registering its Canadian trademark on multiple grounds - mainly that the name would be confused with the band's trademark. According to Dean Palmer IP Law, the firm representing Lawson, the Canadian Intellectual Property Office reviewed evidence from both sides and concluded that there was no likelihood of confusion between trademarks for the metal shop and the metal band. More than three years later, on Sept. 25, 2012, the office rejected the band's opposition, leaving Metallica, the local shop, free to continue pursuing its trademark application.
