Say My Name: Protecting Names and Surnames in Canada
March 02, 2022
Registering the name of an individual as a trademark in Canada poses unique challenges. These challenges frequently impact celebrities wanting to protect their name but can also impact businesses that are named after their founders. Currently, a name is only registrable as a trademark in Canada if the applicant can establish, by way of evidence, that the applied-for name has “acquired distinctiveness” in Canada as of the filing date of the application to register the name. That requirement can present hurdles for celebrities seeking to register their name in association with goods, for example to facilitate a licensing program.
Paragraph 12(1)(a) of the Trademarks Act (the “Act”) provides that a trademark is registrable if it is not a word that is primarily merely the name or surname of an individual who is living or who has died within the preceding thirty years. This is based on the historical common law principle that all individuals should be able to identify their goods or service by their names or surnames, provided that such use is not with the intent of passing off their goods or services as those of another person with the same or similar name. Essentially, any name or surname is, at first blush, unregistrable in Canada.
The leading cases on the issue of registrability of a trademark consisting of the name or surname of an individual who is living or has died in the preceding thirty years are Canada (Registrar of Trade-marks) v. Coles Book Stores Ltd., Gerhard Horn Investments Ltd. v. Registrar of Trade-marks, and Standard Oil Co. v. Canada (Registrar of Trade Marks). Those cases establish the following two-fold test under paragraph 12(1)(a):
- the first question 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 “yes”, then the Canadian Intellectual Property Office (“CIPO”), or a court, must determine if, in the mind of the average Canadian consumer, the trademark is "primarily merely" a name or surname, rather than something else.
What’s in a Name?
As a first step, CIPO considers a “name” to be a given or first name, or initials, combined with a surname. Accordingly, names such as OPRAH and BEYONCE should not run afoul of paragraph 12(1)(a).
In determining whether a proposed trademark is a name or surname, CIPO will undertake its own research. Historically, CIPO relied on there being a minimum number of listings in a telephone directory before it would raise an objection. However, CIPO will now generally conduct Internet research to determine if the trademark is a name or surname of an individual who is living or has died in the previous thirty years. That research is not limited to traditional telephone directories and often includes social media platforms such as LinkedIn.
This threshold is generally easy to meet in the case of a famous individual since even a cursory Internet search will reveal that they are a living (or recently deceased) individual. For other names, as long as CIPO can identify one individual with this name, it is in a position to raise an objection and move to the next stage.
For example, in one case, the Trademarks Opposition Board (“TMOB”) relied on evidence of a single individual in Canada sharing the name of the proposed trademark to meet the first part of the test.
The trademark itself must also be considered in its entirety. In Gerhard Horn, the trademark applied for was MARCO PECCI. Although there was some limited evidence of the existence of an individual with the surname Pecci, there was no evidence that someone had the name “Marco Pecci”. The Court therefore concluded that the “name Marco Pecci cannot be the name of an individual if there be no such person”.
These findings suggest that there should be no impediment to the registration of a fictitious name or a nom de plume, provided it is sufficiently unique.
When is a Name More than a Name?
The second stage of the analysis requires a determination of whether the trademark applied for is “primarily merely” a name or surname, rather than something else. If the trademark has another significance, the question is whether the average Canadian would consider it “primarily merely” a name or surname. The other significance could be, for example, that the word is a coined word, has a dictionary meaning, or that the word is the name of a geographical place.
The primary meaning is not determined subjectively. Rather, CIPO or a court must consider what the primary meaning of the trademark would be to a person in Canada of ordinary intelligence and of ordinary education, in English or French.
CIPO takes a two-pronged approached. First, the Examiner must determine if the trademark is “merely” a name or surname (i.e., is there other “significance”). If there is another significance or meaning to the trademark, then the question becomes what is the “primary” meaning of the trademark.
For example, a court in Canada found that ELDER’S was registrable, since the word “elder” had such significance that it could not be said that it was “primarily” a surname. In the Standard Oil case, the court found that the trademark at issue, FIOR, was a coined word and, after reviewing the evidence, concluded it was not “merely” a surname.
In Coles, the Supreme Court of Canada commented that this stage was an enquiry as to whether the “primary (chief) (principal) (first in importance) meaning of the word merely (only) (nothing more than) a surname?”. In that case, the court considered that “cole” (the plural “coles”) was defined in the dictionary as cabbage (i.e., coleslaw). However, the court found that such usage was “rare, if not obsolete” and “would be little known to the general public of Canada”.
The fact that a surname is rare in Canada has been used as a basis to decide that the “primary” meaning is not as a name or surname. In Claisse v. Claisse Scientific Corporation, the TMOB considered the opponent’s argument that the trademark CLAISSE was not registrable because, among other things, it was primarily merely the name or surname of an individual who is living or has died within the preceding thirty years. Although the evidence showed that “Claisse” had some surname significance in Canada and had no other known meaning, the rarity of such a surname necessarily led to the conclusion that the average Canadian would be more likely to perceive it as an invented word.
Specifically, the TMOB concluded that, although the word “Claisse” does in fact correspond to a surname, the rarity of this surname, in conjunction with the fact that the word “Claisse” has no particular connotation, means that the two characteristics (surname and invented name) are equally important. Therefore, the word “Claisse” could not be said to be “primarily” merely a surname.
However, the other “significance” of a surname can not necessarily be use of the proposed trademark as a “trademark”. An applicant wishing to rely on its use of the proposed trademark to establish that the trademark has acquired significance beyond being a name or surname will need to prove that the mark has “acquired distinctiveness” as of the filing date of the application.
For example, in Molson Breweries, a Partnership v. Labatt Ltd., the TMOB concluded that, although LABATT may be perceived as a trademark by the Canadian public, it was not due to its inherent status as a coined word. Rather, it was due to its extensive trademark use. However, to allow the applicant to establish that in an opposition would render meaningless the provision of the Act which requires an applicant to establish that a mark is distinctive during prosecution.
The Name Game?
There are still several options available to protect a name or surname as a trademark in Canada.
Establish that the Name has Acquired Distinctiveness
Despite an objection from CIPO, a name or surname is registrable if an applicant can provide evidence that the trademark has acquired distinctiveness (similar to the U.S. concept of “secondary meaning”) in Canada as of the filing date of the application.
It is often frustrating for an applicant to be faced with an objection that its trademark is the name of a famous individual, and then be compelled to prove that very fame in order to overcome the objection.
There is a certain “the chicken or the egg” quality present. For example, a famous musician may apply for a trademark comprising their name in association with “entertainment in the form of live musical concerts”. The only evidence that CIPO may find to raise an objection to the registration of the trademark is references to the musician’s concerts. That would suggest that the trademark has acquired distinctiveness in association with musical concerts. Nonetheless, the applicant will be required to establish the very fame being held against them.
The issue is more acute if the musician is branching out in a licensing program and wishes to secure a registration for their name in association with household products. In that case, the applicant may not (as of the filing date) have sold any household products in Canada in association with the trademark. Accordingly, it will be difficult to establish that the trademark has acquired distinctiveness.
From a common law perspective, the musician would be entitled to enforce rights in their name if they can establish the requisite goodwill.
Signatures, Portraits, and Other Exceptions
In order to overcome the barriers to registration, applicants have looked to different ways to protect their name. For example, often trademarks that comprise a name include distinctive elements.
Merely filing for a trademark comprising a name in a fanciful font may not be sufficient. However, one common avenue is for the individual to apply for a depiction of their signature.
Famous individuals may also seek to apply for depictions of their likeness.
In both of these cases, an objection may still be raised. Specifically, subsection 9(1) of the 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. However, this prohibition can be overcome by obtaining the written consent of the individual referenced.
A fictitious name, stage name, or nom de plume is registrable, provided it does not coincide with the name of a living person or a person who bore such name and has been dead for less than thirty years. For example, although Dwayne Johnson may not be registrable, THE ROCK likely is.
Other options to overcome obstacles to registering names as trademarks include combining the name or surname with other words or design elements. For example, the name WAYNE GRETZKY is registered in Canada but in all cases as part of a design. In one case, DR. C. SOLDAN was registrable because, despite evidence of two telephone listings for “C. Soldan” there was no evidence that those individuals could be addressed as “Dr.”.
Impact on Historical Names
The prohibitions to registering names and surnames (as well as signatures and portraits) is limited to a name of a living person or a person who bore such name and has been dead for less than thirty years. For the names of individuals who have been dead for more than thirty years, the above prohibitions to registration do not apply.
Nonetheless, the estate of the deceased individual may object to someone attempting to use or register the individual’s name or likeness.
Limitations on Enforcement
Even once an applicant has secured a registration for a trademark that includes or incorporates their name, there are certain limits in Canada on the enforceability of those rights.
Specifically, the Act provides that the registration of a trademark does not prevent a person from making, in a manner that is not likely to have the effect of depreciating the value of the goodwill attaching to the trademark, any bona fide use of his or her personal name as a trade name.
It should be noted that the carve-out for bona fide use of a personal name is limited to use as a trade name, not as a trademark. Further, the provision does not appear to impair the right of a trademark owner to rely on a common law passing off claim.
In view of the fact that there is often substantial goodwill associated with a person’s name or surname, there are good reasons for seeking trademark protection for such names. As noted above, although it can be more difficult to register trademarks of this type relative to other types of trademarks, advance planning can often avoid the pitfalls associated with prosecution of name marks.
In a recent decision arising from an appeal of a decision of the Trademarks Opposition Board, the Federal Court commented on when a retailer can establish use of a trademark on goods when the retailer is not the “source” of the goods. Specifically, if a retailer simply affixes its own trademark to goods manufactured by a third party, does that constitute use of the retailer’s trademark in association with those goods.
Interlocutory injunctions in Canadian trademark cases are rare. The decision at first instance to grant a motion for an interlocutory injunction in a dispute related to the “Bombay Frankie” trademark therefore made headlines, at least in trademark circles, for two reasons. First, the fact that the injunction had been granted was in itself noteworthy. Second, many in the intellectual property bar were of the view that the decision misapplied certain fundamental principles of trademark law and therefore introduced uncertainty into the law.
Canada continues to make news (the wrong kind) when it comes to the slow pace of its examination of trademark applications. Despite repeated promises by the Canadian Intellectual Property Office (“CIPO”) to speed things up, the problem is only getting worse. However, there are some promising signs.