Terry Halifax
Northern News Services

Yellowknife (Oct 02/00) - There are 80 polar bear designs trademarked in Canada, featuring the big white bear on everything from winter boots to breath mints.

The bear has been recruited to sell everything from Coca Cola to camping gear, but now the unwitting beast is caught in a legal tussle over the use of its image.

Sirius Diamonds Ltd. has filed around the world for exclusive rights to laser-etch a polar bear design on all diamonds cut and polished at its Yellowknife facility.

The government of the Northwest Territories takes exception, and threatens to take Sirius to court if the company challenges the use of the bear on any other diamonds mined in the NWT.

Lisa Power, assistant director of trademarks with the Canadian Intellectual Property Office of Industry Canada, says the trademark rights depend on several variables -- but being first is critical.

In any dispute, "if one party has used that trademark in Canada in the past, then they will win, so to speak,"she said.

"Where two applicants come with the same thing, and neither has used it, the person who gets here first wins."

According to documents obtained by News/North, the first to file or use a polar bear design on a diamond was Sirius Diamonds, who first filed on Nov. 20, 1998. The company also has used the mark on diamonds since October 1998.

However, in 1969, the GNWT was granted a trademark on the bear for use in promotional materials - but not specifically for diamonds.

On March 25, 1999, the GNWT filed and was granted registration on April 20, 1999, for what is known as a "Section Nine" mark or an official mark government emblem, to be used on flags, business cards, letterhead etc.

Doug Kuntze director of trademarks with the Cannadian Intellectual Property Office of Industry Canada, said the official mark excludes all others from using the mark without their permission.

"It covers all wares and services; it wouldn't just be baseball caps or magazines -- it covers everything," Kuntze said.

Also on March 25, 1999, the GNWT filed an application for the bear logo to be used on diamonds. That application, like the Sirius application has not been approved.

Power said the intellectual property office does not enforce the use or misuse of trademarks and any conflict must be settled between two parties or in Federal Court.

According to Orrin Splane, administrator for the Federal Court in Edmonton, a suit was filed by the GNWT against Sirius on May 30 and ammended on Aug. 10.

As of press time, News/North had not yet obtained the statement of claim.

At the US Patent and Trademark Office, Sirius first filed on May 19, 1999 for an east-facing, three legged bear.

The GNWT filed their application on Sept. 27, 1999.

Sirius filed an application featuring a west-facing, four-legged bear on Sept. 30, 1999.

On May 5, 2000, the GNWT filed a letter of protest with the U.S. office.

All three of these applications are before the office legal examiner.

Kuntz said the process of trademarking a design can take up to a year.

Once the application is filed, th Industry Canada data base is searched for potential conflicts with other trademarks.

If the application is cleared, the final step is publication in Industry Canada's trademark journal.