Appeals court rules lawsuit can proceed in Washington state because the renegade Canadian store could devalue an American-held trademark

This article is more than 4 years old

This article is more than 4 years old

Pirate Joe’s, a renegade Canadian grocery store, is going back to court with Trader Joe’s, an American grocery store with a cult following.

Meet Pirate Joe, the man who (legally) smuggles Trader Joe's goods into Canada Read more

In an October 2013 trademark case, Trader Joe’s said the Vancouver shop was violating trademark laws with its operation, which resells Trader Joe’s products in Canada, where there are no Trader Joe’s stores.

A US district judge dismissed the case, writing that Trader Joe’s could not prove that Pirate Joe’s affected its business in the US.

Last week, however, the ninth circuit court of appeals said the case could proceed because the Canadian store could devalue an American-held trademark.

“It’s pretty obvious to me that Pirate Joe’s is short for unaffiliated, or unauthorized, there never has and never will be an effort to trade on a name, we’re just providing a service and we think it’s benign,” Michael Hallatt, Pirate Joe’s founder, told the Guardian on Monday.

The case will return to a federal district court in Washington state, where many Trader Joe’s stores have allegedly “blacklisted” Hallatt. He hires people to shop for him in Trader Joe’s stores across the country, then meets them in a secret location to load up his van and take the groceries across the border.

“It [Pirate Joe’s] has never not been silly, and the fact that there’s this ninth circuit serious consideration of this whole thing, it’s beyond me,” Hallatt said. “It [Trader Joe’s] is a big company, with a big brand.”

Trader Joe’s, which did not respond to a request for comment, estimated in court documents that Hallatt had spent more than $350,000 on its products. In November 2014, Hallatt told the Guardian that was how much he spent annually at Trader Joe’s.

Hallatt, who marks up products like chocolate-covered almonds and gorgonzola cheese crackers by $1.50 or more, said he was hoping to make $100,000 this year so he could hire someone to run the store for him.

The shop moved to a larger space this summer, and changed its name to Super Pirate Joe’s. After news of the reopening of the court case, Hallatt said customers were stocking up on items, in case the store shuts down.

Trader Joe’s filed a lawsuit against Hallatt in 2013 for trademark infringement, unfair competition, false designation of origin and false advertising.

Hallatt told the Guardian: “We’ll sit around waiting for a decision, years, and then there will be a decision, and then someone is going to appeal it, and we’re going to bounce this thing all the way to the supreme court.

“That’s insane.”