John Dimatteo, co-owner of his family-owned menswear shop, Genesis, poses for a photograph on Feb. 1.Tijana Martin/The Globe and Mail
A Toronto clothing store that is half a century old has spent more than four years and tens of thousands of dollars in legal fees fighting a David-and-Goliath battle with one of the world’s largest automakers over the rights to its own name.
Genesis, a menswear store in the city’s Corso Italia neighbourhood that specializes in made-in-Italy fashion, has been fighting to keep the trademark on its name against challenges from South Korean auto giant Hyundai Motor Group HYMTF, the maker of the Genesis line of luxury cars.
The court case concerns who has the rights to sell certain types of men’s clothing, such as sweaters and pants, with the name Genesis on them.
But the owners of the clothing store say the case is about more to them than just the branding.
“When we’ve been challenged to have our name expunged, it became very emotional for us,” co-owner John Dimatteo said. “Because it’s not just a name to us, this is our livelihood.”
The clothing store was founded by John’s late brother Gene in 1973 to sell high-end men’s fashion. The shop sells items made in Italy with the Genesis name on them, as well as other brands, such as Brioni.
In 1987, at the advice of a customer, Gene applied to register a trademark for the specific purposes of his business: operating a men’s clothing store and for items it carries, including suits and ties.
A wide range of other businesses use the name Genesis, from tractors to ski helmets. The Canadian Trademarks Database has 379 active listings of the term for various uses.
In late 2016, amid some health challenges, Gene sold the business to John and a long-time employee, Sergio Genovese.
John, who had worked at the store at the beginning of his career before working elsewhere, said he saw many familiar faces when he returned to the shop as a co-owner.
“We’ve been in the same location, had the same customers – as a matter of fact, right now, we’re on four generations. One of our customers had a little boy, so as soon as he buys something,” he said, gently knocking on the table for emphasis, “four generations.”
It was that year that Hyundai brought its line of Genesis luxury cars to Canada. And, according to federal trademark records, it was also then that law firm Lavery De Billy LLP applied for trademarks on behalf of Hyundai to use the Genesis word and logo on a variety of items, from golf equipment to electronics. Two applications were for using the word and logo on clothing items.
The records show that, a year later, a trademark examiner delivered a report on the carmaker’s application. The contents of the report have not been publicly released, but such reports typically include comments about whether an application overlaps with an existing trademark held by someone else. The records also show that, since then, Hyundai has requested – and been granted – 10 time extensions to respond to the examiner’s report.
In late 2018, Lavery filed a challenge with the federal Registrar of Trademarks. The challenge required the owners of the Genesis clothing store to produce evidence, such as photos and documentation, proving that they were still using the name of their company for the purposes of the trademark.
Two years later, an officer of the Trademarks Opposition Board, a body that handles trademark disputes for the Canadian Intellectual Property Office, ruled largely in favour of Mr. Dimatteo and Mr. Genovese. The ruling struck a few items off the list of trademarked goods, such as cummerbunds and socks, but kept most uses intact.
Lavery then appealed the trademark ruling to the Federal Court, arguing that the evidence submitted by the clothing store was insufficient. Months later, Mr. Dimatteo and Mr. Genovese launched their own appeal to have the items that were stricken off the trademark listing restored.
A Federal Court judge is scheduled to hear both cases on Feb. 14.
Mr. Dimatteo said the protracted fight has led to both stress and a pile of bills.
“It’s been very expensive for us over 4½ years,” he said. “Delays, delays. Going to court. Affidavits. Cross-examination, even. The cost of this, to a small business like us, is very trying right now.”
After The Globe and Mail reached out to Hyundai last week for comment, Mr. Dimatteo and Mr. Genovese said they heard from their lawyer that the automaker suddenly expressed interest in reaching a settlement.
Sophie Choi, a spokesperson for Genesis Motors in South Korea, told The Globe that “we are working to amicably resolve the matter to everyone’s mutual satisfaction.”
“Canada is an important market for the Genesis brand and we are committed to having a positive impact on the Canadian communities that we serve,” she said.
The clothing-store owners say one reason they are frustrated by the whole fight is that they don’t see their products as directly competing, even if they both go after the same type of customer who shops for luxury items.
Mr. Genovese said that when the Genesis cars first came to Canada, he even admired the advertising.
“They used to put a guy in a nice-looking suit, sitting down in a car, with this kind of an angle, and you can see the Genesis logo,” he said, adding: “You selling the car or selling the suit?”