To Zell With It: How Canada’s Forgotten Brand is Being Fought Over

Hi everyone,

I came across an article this week that I thought was particularly interesting following our recent discussions in class on the temporal element of trademarks and their “use it or lose it” nature. In mid-October, it was announced that Hudson’s Bay is suing the “Moniz” family in Quebec over using the “Zellers” brand in the Federal Court for “trademark infringement, depreciation of goodwill [and] passing off”. The article explains how the family made several trademark applications in 2020—including applications for use of Zellers Convenience Store and Zellers Restaurant—and how Hudson’s Bay is claiming that this creates confusion between the Bay’s goods and services and that of the Moniz family.

I think this is particularly interesting because of the spectacular failure of the Bay’s version of Zellers—the last stores of which were closed in 2020. Famously, around a decade ago, all the Zellers stores in Canada were turned into the American-originated Target retail store. More famously still, a few years later Target closed down all their Canadian stores after the store became known as a huge disappointment. However, in September of this year, the Bay opened a Zellers pop-up store in a Burlington, ON location—an event that has been referred to as “a PR exercise”. Since this pop-up store, the Bay chose to let the Zellers trademark lapse, which is when the Moniz family happily swooped in and took the trademark up themselves. The Moniz family themselves also seem to have an interesting backstory.

I think this raises many questions in regards to the temporal nature of trademark law: did the Bay effectively give up on using the mark when it converted all its Zellers stores to Targets and then close the remaining ones a few years later after it spectacularly failed? Did the Bay give up the mark when it opened a pop-up, seemingly as a trial run, only to let the trademark lapse soon after? Does the Moniz family’s version of Zellers really have the potential to create confusion in the mind of the consumer when the Zellers story is so well-known in Canada (and, indeed, when the Zellers brand continues to find itself as the target (so to speak) of many jokes—including on this parody Twitter account, the description of which is “Hoping HBC doesn’t get Twitter to shut us down again….”).