Trade-Marks Examination Manual (page 25 of 55)

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IV.3 Paragraph 12(1)(a) — Names and Surnames

The Act states that a trade-mark is registrable if it is not:

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.

The statute generally follows the historical principle of common law that all people should be able to identify their goods by their names or surnames, providing the name or surname was used honestly and not with the intent of passing off the goods as those of another person with the same or a similar name.

When confronted with a mark comprised of a word or words which have name or surname connotations, the examiners must determine in each case if the word is primarily merely the name or surname of an individual who is living or has died within the preceding thirty years, since the word may have another or other connotations which would figure significantly in the minds of Canadian consumers. Where the word is the name or surname of an historical character who has been dead for more than 30 years, that word is normally registrable. See also section IV.3.11 of this chapter.

In addition, subsection 12(2) and section 14 of the Act provide for the registration, under certain circumstances, of a word or words which are prohibited under paragraph 12(1)(a). A word which is a name or surname may be registrable under subsection 12(2) provided the applicant can furnish satisfactory evidence to show that the name or surname has acquired a secondary meaning and does in fact distinguish the goods of the applicant from those of others. See section IV.10 of this manual.

Pursuant to section 14, a word which is a name or surname may be registrable, provided the trademark is not without distinctive character in Canada. Where an applicant claims the benefit of section 14, circumstances such as the length of time the mark has been used in any country will be carefully considered. See also section II.7.8 of this manual.

IV.3.1 Word

The Interpretation Act provides that the singular includes the plural, so that "a word" in paragraph 12(1)(a) includes "words.

In Standard Oil Co. v. Registrar of Trade Marks (1968), 55 C.P.R. 49 at p. 58, Jackett J. stated:

For trade mark purposes, there are at least three classes of 'words', viz., dictionary words, names, and invented words. They are all words, in my view, at least for the purposes of the Trade Marks Act.

IV.3.2 Definition of Name or Surname

A surname is the name borne in common by members of a family, while a name is a forename or given name or initials combined with a surname, for the purpose of individualizing members of the same family. A word is registrable when it is only a forename or a given name, unless it is also a common surname. See section IV.3.10 of this manual for further clarification.

A trade-mark comprised of a form of address such as Sir, Madam, Miss, Ms., M., Mme., etc., in combination with a word which is a given name, is not normally considered to be primarily a name or surname, and is also seen as registrable material. However, in Baroness Spencer-Churchill v. Cohen (1968), 55 C.P.R. 276, the Registrar found the trade-mark Sir Winston to constitute a combination of words by which the late Sir Winston Leonard Churchill was regularly known and designated, and was therefore primarily merely the name of an individual who had died within the preceding 30 years. In the case of a trade-mark which consists of a form of address and a word deemed to be primarily merely a surname, the surname portion of the mark must be disclaimed.

IV.3.2.1 Given Name and Surname

A mark which appears to be a combination of a given name and a surname, or the initial(s) of a given name or names and a surname, should not be objected to under paragraph 12(1)(a) unless that exact combination can be located in a directory, book of names or similar reference source.

If such a combination cannot be located, but only its surname portion, then the examiners should request a disclaimer to the right to the exclusive use of the surname portion.

If, however, such a combination can be located, then, and only then, should the test to determine primary meaning be applied. See section IV.3.10 of this manual.

Example

In Gerhard Horn Investments Ltd. v. Registrar of Trade Marks (1983), 73 C.P.R. (2d) 23, Cattanach J., in allowing registration of the mark Marco Pecci, said at p. 25:

What is precluded by para. 12(1)(a) from registration as a trade mark is the 'name or surname of an individual who is living or has died within the preceding thirty years' and the name of a fictitious person is not precluded thereby from registration except when by chance the fictitious name coined by the applicant for registration thereof coincides with the name of a living person or a person who bore such name and has been dead for less than thirty years.

And later at p. 30:

The first and foremost consideration is whether the word or words sought to be registered in the mark is the name or surname of a living individual or an individual who has recently died. It is when that condition precedent is satisfied, and only then, that consideration need be given to the question whether the trade mark applied for is 'primarily merely' a name or surname rather than something else.

And again at p. 31:

It is not enough that the fictitious name may resemble the name that could be borne by an actual person or might be thought by the public to be names or surnames. That thought only becomes material when it is established by evidence that there is a living person of the name or surname in question.

IV.3.2.2 Surnames Followed by "& Sons," "Brothers," etc.

Words comprised of a surname followed by "& Sons," "Brothers," etc. are not, as a whole, objectionable under paragraph 12(1)(a) as being primarily merely a surname. The additional matter such as "& Sons" takes away the "primarily merely" element. A disclaimer of the surname portion of the trade-mark would, however, be required in view of paragraph 12(1)(a) and section 35 of the Trade-marks Act.

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