Toys ‘R’ Us Canada’s successor did not continue a trademark opposition against Calgary’s Club Rendezvous, closing the case and clearing the way for use of “Club R.”
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The new owner of Toys “R” Us Canada appears to have abandoned the retailer’s trademark fight to keep a Calgary swingers club from using the phrase “Club R.”
In filings made with Canada’s intellectual property office earlier this year, the toy chain’s previous owner argued that allowing Club Rendezvous Inc. to use “Club R” would cause confusion. The intellectual property office’s database shows Toys “R” Us Canada’s opposition period ended Sept. 30, but Next Century — which picked up some of the retailer’s assets after it entered creditor protection — did not file a statement of opposition and did not request an extension.
Because no one was actively contesting the use of “Club R,” the trademark opposition board closed the case a month later. The closure meant Club Rendezvous received the go-ahead to use “Club R.”
The owners of the organization, who were not identified because their families were unaware of their involvement in the business, said they were pleased with the outcome and called the dispute “unusual,” noting the club operates in a different industry from children’s toys.
Next Century, along with its parent company Ad Populum, which also owns Party City and manages the Chia Pet brand, and the company’s lawyer did not respond to requests for comment. Next Century plans to open the first of about 300 Toys “R” Us Canada shops within Staples Canada stores on Saturday in Richmond Hill, Ont., after acquiring rights to the Toys “R” Us Canada name and about 150 trademarks earlier this year.
The Toys “R” Us Canada trademark dispute with Club Rendezvous was not the only one pursued during the retailer’s creditor protection period. The intellectual property office’s database shows Next Century appears to be continuing two other trademark cases: one seeking to stop Russian firm Biomicrogeli from using the phrase Wonderlab, the name Toys “R” Us Canada gave to its indoor jungle gym and craft centres (later renamed Playlab); and another seeking to keep tech giant Acer from using a backwards R, arguing that the retailer’s trademarks prevent others from applying the reversed letter to electronic devices and other products.
Erin McEwen, a trademark agent at Nelligan Law in Ottawa who was not involved in the cases, said she wasn’t surprised Next Century adopted both fights, noting that companies often try to stop similar names and logos due to concerns about consumer confusion, brand dilution and reputational harm. McEwen also said trademark opposition cases can take three to four years, and that stopping one case could reflect how much time has already been invested, including the Calgary business’s roots dating back to 1983.
“If I were in their shoes, I wouldn't jump ship just yet,” McEwen said, adding, “Toys 'R' Us already put in all that time and money, why waste it? They might as well just ride it out and wait for the decision.” She said it may be harder to fight a trademark dispute the longer a name has been in use.
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