Publication Date: 2019-01-02
This notice is intended to clarify the Trademarks Office practice with respect to applying the provisions of paragraph 12(1)(a) of the Trademarks Act (hereinafter referred to as the "Act") relating to names and surnames.
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.
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.