Below is an excerpt from John McKeown’s November 2018 Monthly IP Blog.
In our September entry we discussed the registrability of trademarks and characteristics that may preclude registration. This month we are providing more detail about names and surnames.
Name or a Surname
A trademark is not registrable if it is a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years. The question to be answered is whether the primary or principal meaning of the word is merely a surname. If the answer to the question is yes, then the trademark is not registrable. In answering this question, the Registrar or the Court, as the case may be, must take the perspective of a person in Canada of ordinary intelligence and education and determine whether they would likely respond to the word by thinking of it as being the surname of one or more individuals.
In order to establish that a trademark is primarily merely the name or surname of an individual who is living, there must be evidence that an individual bearing that name is living or has recently died. It is immaterial whether the name is rare or in common use, as long as it is a name and nothing else. However, as a practical matter, examiners at the Trademark Office review Canadian telephone directories. An objection will generally only be considered if there are at least twenty-five entries of the name or the surname located in the directories. But where the mark consists of the name or surname of a famous individual, an objection may be raised notwithstanding the existence of less than twenty-five entries in the directories.
Even if a trademark is primarily merely the name or surname of an individual who is living or has died within the preceding thirty years, it is still possible to register the trademark by filing proof of a secondary meaning. But this can only be done for marks that have been in use for a significant period of time and can be a time consuming and expensive process.
The limitation does not prevent the registration of foreign words or the names of historical characters who have died prior to the preceding thirty year period or a Christian name alone. The name of a fictitious person is not precluded from registration unless the fictitious name coincides with the name of a living person or a person who bore such name and has been dead for less than thirty years. If the mark is both a surname and a dictionary word, each of which are of substantial significance, it is not “primarily merely” a surname.
Concurrently, subsection 9(1) of the Trademarks Act prohibits the adoption of a trademark consisting of, or so nearly resembling as to be likely to be mistaken for, the portrait or signature of any individual who is living or has died within the preceding thirty years. This prohibition can be overcome by obtaining the consent of the individual involved but a signature is prima facie unregistrable since it is a surname.
These limitations can create headaches for entertainers and other famous individuals who wish to use their name as a trademark frequently for licencing purposes. Once the current amendments are in force these individuals will have to file evidence of secondary meaning.
If you have any questions or concerns please contact me at mckeown@gsnh.com.
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.