In the middle of a massive advertising campaign to introduce its newly renamed Tangerine Bank subsidiary to Canadians, the Bank of Nova Scotia has found itself in a legal battle over its right to use the label.
After Scotiabank acquired ING Bank of Canada in 2012 from its Dutch parent for $3.1-billion, 3,000 possible new names were considered before settling on Tangerine. The new name allowed the subsidiary – which has no branches and offers low-fee, high-interest bank accounts – to keep its distinctive orange colour in its branding.
But now, a small financial business based in British Columbia is trying to block Scotiabank's use of the name, saying it owns it and was using it first. A hearing is scheduled to begin on June 18 in Vancouver in B.C. Supreme Court.
In a ruling issued May 27, B.C. Supreme Court Justice Nathan Smith denied a request from Scotiabank to toss out the court challenge as an "abuse of process" that was sure to fail. However, Justice Smith did say the challenge faces "substantial hurdles."
The attempt to short-circuit the bank's re-branding comes from a Vancouver company called RSP Generation LP, which bought the assets of a business called Tangerine Financial Projects LP in 2012. That Tangerine, which aimed to market a financial strategy related to unused registered retirement savings plan contribution limits, had gone under and into receivership.
RSP, whose chief executive is Vancouver lawyer Melvin Reeves – who was also involved in Tangerine Financial Projects LP – claims that it now owns the Tangerine name and that it has been used since 2008, including in ads in publications in Edmonton and in Quebec in 2009.
According to court documents, a lawyer for RSP wrote to Scotiabank last November, just days after it announced it was renaming ING, to warn it of RSP's ownership of the Tangerine name.
But Scotiabank, which applied to trademark the name in August, 2013, denied it was violating any of RSP's rights.
And the bank has since gone ahead ahead with a multimillion-dollar ad campaign to promote its own Tangerine, plastering billboards and bus stops in Canadian cities and broadcasting a TV spot that features a spokesman hanging from the side of a moving train.
Neither Mr. Reeves, nor spokespeople for Scotiabank would comment publicly on the case when contacted by The Globe. Prominent Vancouver lawyer John Hunter of Hunter Litigation Chambers, who is acting for RSP, did not respond to requests for comment.
According to RSP's court application, Tangerine LP did apply for a trademark in 2007, but "did not complete the declaration of use required to complete the registration process, resulting in the application being administratively inactivated." RSP says it reapplied for the trademark on Nov. 22, 2013 – after Scotiabank's Nov. 5 announcement of its subsidiary's new name.
While the Tangerine LP sank into receivership in 2011 and 2012, it was unable to use the mark, according to court documents. But Mr. Reeves says in the court application that he uses it now, on his e-mail signature, his business cards and on a banner in his office.
According to RSP's court filing, the company entered into a confidentiality agreement with the Bank of Nova Scotia "for the purposes of discussing a possible purchase of the investment strategy" last June, a few months before the Tangerine re-branding was announced.
As of May 7, RSP was registered as lobbying the federal government for regulatory changes related to its retirement strategy, according to the Office of the Commissioner of Lobbying of Canada. The company says in its court documents that it "has yet to obtain the necessary regulatory approvals to deploy the investment strategy."