What’s in a name? Canada may have just made it more difficult to register name and surname marks

The Canadian Intellectual Property Office has recently revised its Practice Notice regarding name and surname objections. The revised Practice Notice can be found here.  

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. Canadian courts have established the following two-part test to determine the registrability of a trademark under paragraph 12(1)(a):

1. Is the trademark the name or surname of a living individual or an individual who has died in the preceding thirty years?
2. 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.

Previously, Examiners were required to locate a minimum of 25 listings in Canadian phone directories before a name and surname objection could be raised. The revised Practice Notice indicates that, “to better reflect the purpose of paragraph 12(1)(a),” effective immediately, Examiners are no longer required to find a minimum number of listings of a name or surname before a paragraph 12(1)(a) objection is raised.

Notwithstanding this change, the number of listings in Canadian phone directories for a particular name or surname may continue to affect an Examiner’s decision as to the registrability of the trademark. In particular, the Practice Notice indicates that while the absence of listings will not preclude an objection being raised, “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.”  

This change provides Examiners with more latitude to raise name or surname objections, and we therefore expect to see an increase in such objection in the future.

If you have any questions or would like further information, please contact a member of our firm’s Trademark group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.