Quebecer whose family is being sued by Hudson's Bay over Zellers brand says he's 'not surrendering'
HBC's trademark for brand expired in late 2020, but it's suing those using it since of trademark infringement
The battle over who owns the name and brand Zellers is heading to court, but the man whose family is being sued by the Hudson's Bay Company says he intends to continue using the name of the previously defunct Canadian department store.
Robert Moniz and other family members are the defendants in a statement of claim filed in federal court by HBC in October. The company is accusing them of trademark infringement when it comes to the use of the name "Zellers," along with depreciation of goodwill and what is known as passing off, which is deceptive marketing.
In an English-language exclusive series of interviews with CBC Radio's The Cost of Living, Moniz said despite the lawsuit, he and his partners intend to continue using the Zellers name for now.
"Zellers, their lawyers didn't do their work. The trademark was expunged," said Moniz. "They had enough time to take over the trademark. They didn't take it."
He told CBC it is unclear how he and other family members will deal with the federal lawsuit.
"I'm working with my lawyer to respond," said Moniz, who stressed he cannot speak for his mother or other family members.
Potentially heading to court
According to HBC's statement of claim, Moniz's intention was to "either confuse Canadians or recover a payment from HBC."
The Zellers brand is being used to intentionally "mislead Canadian consumers" and "trade on the valuable goodwill owned by HBC," the retailer said in court documents.
The lawsuit comes after the Hudson's Bay Company failed to renew its trademark on Zellers, and it was "expunged" in September 2020, according to the federal government's Canadian Trademarks Database.
The Moniz family is behind various recent trademark applications and registered company names, including Zellers Inc., Zellers Convenience Store Inc. and Zellers Restaurant Inc.
The trademark database shows a new application to register the Zellers name and logo design was filed in April 2021 by a "Zellers Inc." based in La Trinité-des-Monts, Que.
That Zellers Inc. is not affiliated with the Hudson's Bay Company in any way, according to HBC.
Who is the new Zellers?
The corporate structure being used to register the Zellers brand is unclear.
The federal trademark registry lists "Zellers Inc.," but Moniz told CBC his mother is the main investor in a "Zellers Canada" company.
Moniz said he is on the "board of directors for Zellers Holdings," which he described as a real estate management company looking for investments, including a future development he called "Zellers Plaza."
The website link Moniz provided for Zellers Plaza included promises of low-income housing and future Zellers locations in Ontario, New Brunswick and Prince Edward Island.
It also included images of various shopping districts that did not appear to be Zellers locations — or in Canada at all.
Years prior to any attempts to take over the Zellers retail brand, Robert Moniz faced a series of charges, including mortgage fraud. While he initially pleaded guilty to multiple counts and spent time in jail awaiting trial, in 2014, he retracted the guilty plea, and proceedings against him were stayed three years later on grounds of unreasonable delay.
Zellers came back — in multiple places
Moniz provided images to The Cost of Living of trailers and vehicles branded with the Zellers logo and spoke of a retail outlet in Sorel-Tracy, Que., with additional locations planned in the future. He did not provide images of a working, operating retail store.
LISTEN | Robert Moniz discusses the 'new' Zellers:
In an interview last Friday, Moniz promised an upcoming Blainville, Que., location would have signage up by Monday, Nov. 8.
"We're gonna have restaurants, [a] convenience store and retail store and the Zellers Express," said Moniz, who described Zellers Express as a business where customers could order goods online and pick them up in store.
Moniz did not provide the URL for a working website where goods could be ordered from Zellers Express at the time of his interviews with CBC Radio.
Moniz also said his family's existing Zellers location in Sorel-Tracy sells furniture. He said while it may not be recognizable as a traditional Zellers, customers were excited.
"People are in shock … they're telling me, 'Oh, you see, Zellers is open," said Moniz. "Because people don't believe that Zellers is open."
Moniz's Zellers signage started appearing around the same time as Hudson's Bay opened up a Zellers "pop-up" store within a Burlington, Ont., location in September.
HBC's Zellers had little to distinguish itself from a traditional Bay outlet other than vinyl signage identifying a corner of the store as Zellers and some red-coloured branding.
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HBC did not directly address whether the Burlington pop-up was a response to other parties trying to register the iconic brand name but said it is "the owner of all registered and unregistered rights in the Zellers mark," and that it was always looking at creative ways to promote Zellers.
HBC has also said it plans to open an additional Zellers pop-up within its Hudson's Bay outlet in Anjou, Que.
Whose lowest price will be the law?
The attempt by the Moniz family to own the Zellers brand may not be successful in the end, according to trademark expert Julie MacDonell.
Even if HBC unintentionally lost registration for the Zellers trademark, someone else can't just walk up and take it, said the lawyer, who is with trademark registration company Haloo.
According to MacDonell, when a business name is well known, as with "really iconic brands, like Zellers is in Canada," it can't just be picked up by someone else even if it appears to be abandoned.
"I compare it to putting out, you know, a nice piece of furniture that you're done with on the curb. Somebody comes by on a Sunday and grabs it up... [that's] not the case when it comes to trademarks and brand." said MacDonell.
MacDonell pointed out that HBC could have a case to keep the Zellers name, because trademarks aren't just about who registered what and when. It's about making sure brand names and who owns them is clear to consumers.
The Moniz family is trying to open up properties branded Zellers in a field that competes with the long-standing use of the name, which is retail. Hence, it could cause confusion for Canadians. Experts such as MacDonell said that means courts and regulators would be likely to side with HBC.
"There's just way too much in common for this to actually fly, in my professional opinion," said MacDonell.
To borrow a famous Zellers slogan, it could be up to the courts to decide whose lowest price is the law.
"My mother refuses to sell trademark Zellers," wrote Robert Moniz in a text message to The Cost of Living.
"I'm not surrendering."
For more stories from the world of business and the economics of everyday life, listen to The Cost of Living on CBC Radio One, Sundays at 12 p.m. (12:30 NT) or download the podcast every Friday night.
With files from The Canadian Press