Can you Register a Surname as a Trademark?
Paragraph 12(1)(a) of the Trademarks Act stipulates that a trademark is registrable if it is not a word that is primarily merely the name or the surname of an individual who is living or who has died within the preceding thirty years.
The leading cases pertaining to paragraph 12(1)(a) are Canada (Registrar of Trade-marks) v. Coles Book Stores Ltd. (1972), 4 C.P.R. (2d) 1 (S.C.C.), Gerhard Horn Investments Ltd. v. Registrar of Trade-marks (1983), 73 C.P.R. (2d) 23 (F.C.T.D.), and Standard Oil Co. v. Canada (Registrar of Trade Marks) (1968), 55 C.P.R. 49. As set out in those cases, the test under paragraph 12(1)(a) is two-fold:
- The first condition is whether the trademark is the name or surname of a living individual or an individual who has died in the preceding thirty years;
- If the answer to the first question is affirmative, then the Registrar must determine if, in the mind of the average Canadian consumer, the trademark is “primarily merely” a name or surname, rather than something else.
Loophole for Foreign Applicants:
The Canadian Trade-marks Act gives foreign applicants an unfair advantage in their ability to register trademarks that are names, surnames or clearly descriptive trademarks, which would otherwise be unregistrable pursuant to section 12 of the Trade-Marks Act. The Amendments to the Trade-marks Act (not yet in force) will repeal this loophole soon.
Merely descriptive marks on the USPTO’s Supplemental Register are deemed to be registered trademarks in section 14 of the Trade-Marks Act (Canada). This loophole may be used to register generic marks, that are not not without distinctive character, for a limited time in Canada. Apply today.
Registration of marks registered abroad
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14 (1) Notwithstanding section 12, a trade-mark that the applicant or the applicant’s predecessor in title has caused to be duly registered in or for the country of origin of the applicant is registrable if, in Canada,
- (a) it is not confusing with a registered trade-mark;
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(b) it is not without distinctive character, having regard to all the circumstances of the case including the length of time during which it has been used in any country;
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(c) it is not contrary to morality or public order or of such a nature as to deceive the public; or
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(d) it is not a trade-mark of which the adoption is prohibited by section 9 or 10.
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Trade-marks regarded as registered abroad
(2) A trade-mark that differs from the trade-mark registered in the country of origin only by elements that do not alter its distinctive character or affect its identity in the form under which it is registered in the country of origin shall be regarded for the purpose of subsection (1) as the trade-mark so registered.
- R.S., 1985, c. T-13, s. 14;
- 1994, c. 47, s. 194.
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Amendments to the Trademarks Act
Clearly Descriptive Trademarks
Clearly descriptive trademarks are generally not registrable trademarks, because of sub-section 12(1)(b) and (c) of the Trade-Marks Act:
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(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
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(c) the name in any language of any of the wares or services in connection with which it is used or proposed to be used;