Words that are primarily merely surnames can not be registered as trademarks, per section 12(1)(a) of the Trade-marks Act:
12. (1) Subject to section 13, a trade-mark is registrable if it is not
(a) 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;
So Paragraph 12(1)(a) of the 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.
New CIPO Practice Notice on Surname Trademarks (2019)
In order to better reflect the purpose of paragraph 12(1)(a), and especially the first portion of the test, effective immediately Examiners are no longer required to find a minimum number of listings of a name or surname in Canadian phone directories before an objection is raised. Given the inherent limitations of online directories (e.g. the use of initials, the lack of listings for cell phone numbers), the absence of listings may still result in an objection being raised. Correspondingly, a higher number of listings in a Canadian directory may provide an indication that the average Canadian consumer would respond to the trademark as primarily merely a name or surname of a living individual. Despite this modification to Examination practice, the two-part test regarding primarily merely a name or surname has not changed.
This practice notice is intended to provide guidance on current Canadian Intellectual Property Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.
Old CIPO Practice Notice on Surname Trademarks (2000)
If there are more than 25 entries in canada411.com or similar Canadian directory for the surname, a trademarks examiner must determine the word’s primary meaning, according to the following CIPO Practice Notice:
When confronted with a mark composed of a word or words that have name or surname connotations, research must be conducted to determine whether it is in fact the name or surname of a living individual (Gerhard Horn Investments Ltd. v. Registrar of Trade Marks 73 C.P.R. (2d) 23). Commencing immediately, an objection under paragraph 12(1)(a) will generally only be considered if there are at least 25 entries of the name or the surname located in Canadian telephone directories. However, once the 25 entries have been located, the test to determine primary meaning must be applied. The examiners must determine what in their opinion would be the response of the general public in Canada to that word. If they consider that a person in Canada of ordinary intelligence and of ordinary education in English or French would respond to the word by thinking of it as the name or the surname of an individual who is living or who has died within the preceding thirty years, an objection under paragraph 12(1)(a) will be raised.
Where research discloses that the mark consists of the name or surname of a famous individual, an objection may be raised notwithstanding the existence of less than 25 entries in Canadian directories.
This practice also applies to pluralized surnames and surnames in the possessive form. An objection will only be considered if there are at least 25 entries of the surname in Canadian directories.
The Supreme Court Rejected the COLES Surname Trademark
The Supreme Court of Canada determined that COLES is primarily merely a surname:
The word “Coles” is a surname that is well-known to the general public of Canada, and any person of ordinary intelligence and of ordinary education in English or French would respond to the trade mark “Coles” by thinking of it as a surname. Moreover, the dictionary meanings of the words “coles” and “cole” are largerly obsolete.
The Federal Court of Canada determined that Stenner is primarily merely a surname:
Stenner was a surname because it had not acquired distinctiveness: any use of the name was always in conjunction with other words that were continually changing such that Stenner had not acquired distinctiveness itself. The use of the name by the registrant’s children, Thane Stenner and Vanessa Stenner, also pointed to a lack of distinctiveness of the mark.
With respect to the public policy grounds, the Court noted that it would be inequitable, except in the clearest cases, for a parent to claim a monopoly over the family name and preclude their children from using it. The Court concluded this was not one of those cases.
Applicants seeking expungement of trade-mark STENNER, as constituting surname which was not distinctive at time of registration, commencement of expungement proceedings—Applicant also contending respondent never using trade-mark alone before registration—Parties arguing about shifting onus, i.e. respondent having to establish entitlement to exception from prohibition against surnames, applicant then having onus to show mark invalid—Shifting onus myth dispelled—Registered trade-mark presumed valid until person seeking expungement can prove otherwise, as clearly stated in Emall.ca Inc. v. Cheaptickets and Travel Inc., 2008 FCA 50,  2 F.C.R. 43—Evidence confirming lack of actual use of trade-mark before registration since respondent was always using STENNER in conjunction with other words—Trade-mark never acquiring any distinctiveness—Applications allowed.
Miranda Aluminum Inc. v. Miranda Windows & Doors Inc. was another intra-family fight in the Federal Court. A son (Miranda Windows & Doors) owned the trade-mark Miranda. His father (Miranda Aluminum) moved unsuccessfully to expunge the trade-marks on various grounds, including his own use of Miranda. However, the Court found that much of the father’s use appeared “to have been intended to make potential customers believe that his business was actually his son’s business” and concluded that its use to confuse consumers could not be used for the purposes of challenging a registration. Although the Court held that Miranda was primarily merely a surname and thus not registrable under section 12(1)(a) of the Trade-Marks Act, it was saved under section 12(2) in that, as of the date of filing the application, the mark had acquired distinctiveness. The Federal Court upheld the lower court decision.