Canadian Magazine Industry News
18 June 2009,     TORONTO
Corporate Knights challenges Maclean's on corporate citizen list
Corporate Knights has been publishing a list of the "Best 50 Corporate Citizens in Canada" for eight years.
[This story has been updated twice.]

For eight years, Corporate Knights magazine has published a list of the "Best 50 Corporate Citizens in Canada" and this year's edition is scheduled for distribution to 95,000 subscribers through the Globe and Mail on June 22. The current issue of Maclean's, dated June 22, also features a story on "Canada's 50 best corporate citizens."
Yesterday morning, Toby Heaps, editor-in-chief of Corporate Knights, issued a press release arguing that the Maclean's feature encroaches on his magazine's trademark. "While we welcome newcomers to the corporate responsibility realm, it's unfortunate that Maclean's seems to have taken a run at our market share by using a trademark that is, in our considered opinion, confusing with our distinctive trademark," Heaps said.

Heaps has also challenged Maclean's editor and publisher Ken Whyte to a public debate. "The good news," Heaps said, "is that concern about this confusion, shared by many eminent Canadians, presents an excellent chance, at a time of economic and ecological upheaval, for Ken Whyte and I to flesh out for the Canadian public, what exactly is a good corporate citizen, and how one goes about defining one."

"Eminent Canadians" who have sided with Heaps include Green Party leader Elizabeth May, former deputy prime minister Sheila Copps and Michael de Pencier, co-founder if Investeco, and chair of Key Publishers Company Ltd.

A Facebook group has also been launched to persuade Whyte to enter the debate.

Maclean's published a list of "Canada's 50 best corporate citizens" for the first time this year.
Heaps said Whyte has not responded to his e-mails.

When contacted by Masthead about the Corporate Knights challenge, Whyte replied, via e-mail: "I’m still not sure who they are but I’m delighted that they read Maclean’s."

Told of Whyte's response, Heaps said, via e-mail: "I think it borders on credulity for him to say he hadn't heard of our Best 50 Corporate Citizens. His research partner, Jantzi, was the same one that did our first Best 50 ranking--before we took on our rankings  in house with the establishment of the Corporate Citizenship Database established on intellectual property built up with Industry Canada financing.

"The other thing is that there is advertising overlap including two full pages (IBM and Starbucks) that have exactly the same creative as in our Best 50 Corporate Citizens issue."

[Update 1] Asked for comment again, Whyte responded: "I had no real knowledge of these guys until June 12 when I received a nasty letter from their lawyer threatening to sue us for trademark violation over our cover line Best 50 Corporate Citizens. They demanded we pull all copies from newsstand, destroy them, print a retraction in Maclean’s, and pay them $4 million dollars. They further threatened to open a public relations campaign against us if we failed to comply. Turns out they don’t even own the trademark to Best 50 Corporate Citizens. They’ve tried to trademark it and been rejected, twice, on the grounds that it is a descriptive phrase and couldn’t be appropriated for exclusive use. As you might understand, I’m not interested in furthering their efforts to publicize themselves at our expense."

[Update 2] Heaps says Whyte's above remarks are inaccurate. ""Corporate Knights has an active trademark application for "*Best 50
Corporate Citizens in Canada"* on file with the Canadian Intellectual
Property Office.  It is currently in a stage called examination.  It
has not been rejected by the Canadian Intellectual Property Office.

"In addition to registered trademarks, Canada also recognizes common-law trademarks, which arise through use. Corporate Knights has used "Best  50 Corporate Citizens in Canada* since 2002, and as such, has acquired trademark rights via Canada's common law.

"Common law trademarks are enforceable in Canada.  Even if a company does not have a registered trademark, if it has a common law trademark that company has trademark rights."
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