British Columbia Metal Shop Wins Initial Trademark Battle Against Metallica
Metallica have been diligent over the years when defending their trademark, but one small metal manufacturing company has emerged victorious in retaining their name after an initial challenge from the band. The Burnaby metal shop known as Metallica Manufacturing will continue to operate under their title after a recent court ruling.
Owner Bill Lawson told Burnaby Now, "It was a very innocent choosing of such a name from a 12-year-old kid." Lawson says that the name was chosen in the late '90s and though the band was around at that point, the Metallica moniker seemed appropriate given their chosen trade as a custom metal shop.
According to Lawson, the British Columbia business operated unencumbered for four or five years, but began to receive legal inquiries when they tried to register for a domain name online. After several years of the band's legal representation trying to stop them from using the name, they filed a trademark application in 2008 seeking to use the moniker in coordination with metal fabrications, welding and machining. Last September, the Canadian Intellectual Property Office ruled that there was no likelihood of confusion between the company and the band, therefore giving Metallica Manufacturing a partial victory by allowing them to continue pursuing their trademark application.
"This is not a gloating issue," said Lawson after the ruling. "We just want to be left alone … We just want to be able to carry on and use the name. The whole city knows us."
It should be noted that Twisted Sister, who have been in the news lately for taking on small mom-and-pop businesses utilizing their name, recently commented on trademark law and not having a decision in who gets targeted. Guitarist Jay Jay French explained, "The fact of the matter is that trademark law doesn’t give me a choice on who and what to defend. The law is very clear: either defend your trademark or lose rights to it." So while Metallica taking on small businesses over their name may seem like "David vs. Goliath," should the band choose not to defend their trademark it would open themselves up to potentially allowing everyone access to the brand they've taken pride in building.