Trade-Marks Examination Manual (page 27 of 55)
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IV.3.9 Meaning of "Primarily"
When the research results indicate that the word has name or surname significance as well as another significance, the examiners must decide what is the primary (chief, principal, first importance) meaning of the word. The primary meaning of the word is determined pursuant to a test to be applied by the examiners.
IV.3.10 Test to Determine Primary Meaning
In order to determine the primary meaning of a word, examiners must determine what in their opinion would be the response of the general public of Canada to that word. The primary meaning is not to be determined subjectively, that is, examiners must not base their findings on what they consider to be the primary meaning of the word. Instead, they must ask themselves what would be the response of a person in Canada of ordinary intelligence and of ordinary education in English or French as to the primary meaning of the word.
The examiners must then balance the name or surname significance of the word and the other significance of the word found in dictionaries or provided by applicants in their responses. If they believe the name or surname significance overwhelms the other significance in the mind of the hypothetical Canadian, an objection pursuant to paragraph 12(1)(a) must be made to the application. If the examiners believe that the other significance of the word predominates in the mind of the hypothetical Canadian,
In the event that the surname significance and the other significance of the word are equal when the test is applied, or, if the examiners doubt that the surname significance is more substantial to the hypothetical Canadian than the other significance of the paragraph 12(1)(a).
In Elder's Beverages (1975) Ltd. v. Registrar of Trade Marks (1979), 44 C.P.R. (2d) 59, Mr. Justice Cattanach allowed registration of the mark Elder's, stating at p.63:
In my opinion the two characters of the word 'elder', one as a surname and the other as a dictionary word, are each of substantial significance and therefore it cannot be said that the word is 'primarily' a surname.
In the Fior case, Standard Oil Co. v. Registrar of Trade Marks (1968), 55 C.P.R. 49, Jackett J. found on the evidence that Fior is "a word that is…the surname of an individual who is living." It was also established by evidence that Fior was created "fluid iron ore reduction." Fior was an invented word and not "merely" a surname. The learned Judge, after reviewing the evidence and the law, stated at p. 59:
My conclusion is that a person in Canada of ordinary intelligence and of ordinary education in English or French would be just as likely, (if the two characters (surname and invented word) are of equal importance, it cannot be said that it is 'primarily merely' a surname), if not more likely, to respond to the word by thinking of it as a brand or mark of some business as to respond to it by thinking of some family of people (that is, by thinking of it as being the surname of one or more individuals). Indeed, I doubt very much whether such a person would respond to the word by thinking of there being an individual having it as a surname at all.
In Registrar of Trade Marks v. Coles Book Stores Ltd. (1972), 4 C.P.R. (2d) 1, Mr. Justice Judson of the Supreme Court of Canada approved the test of the hypothetical person in the Fior case. In the Coles case, Judson J. found that Coles is a surname well-known to the general public in Canada. He also found that the dictionary meaning of the word "cole" and its plural form "coles" are largely obsolete. 3, refusing registration, he stated:
My only possible conclusion in this case is that a person in Canada of ordinary intelligence and of ordinary education in English or French would immediately respond to the trade mark 'Coles' by thinking of it as a surname
In Galanos v. Registrar of Trade Marks (1982), 69 C.P.R. (2d) 144, Mr. Justice Cattanach applied the test in allowing registration of the mark Galanos and said as follows at p. 155:
I have difficulty in appreciating that the purchasing public would respond to
In my opinion a Canadian of ordinary intelligence and education in English or French would be as likely, if not more likely, to respond to the word by thinking of it as a coined, fanciful or invented word used as a brand or trade
Therefore, examiners should give weight to the applicant's argument that the word or words adopted are for trade-mark purposes and should have regard to the public perception of the word or words. Once this has been done, and if it is decided that the word or words are not "merely" a name or surname, i.e., they have trade-mark significance, dictionary meaning, geographical significance, and so on, then the "primary" meaning of the word or words must be decided. Is it primarily a name or a surname, or is it primarily a trade-mark, geographical location, and so on?
In Juneau v. Chutes Corp. (1986), 11 C.P.R. (3d) 260 (Opp. Bd.), the mark Juneau was held to be primarily merely the surname of a living individual even though "Juneau" is the capital of Alaska and a county or town in the state of Wisconsin. This was because a majority of Canadians, particularly those in the province of Quebec, would immediately respond to the trade-mark Juneau as having a surname significance as opposed to having any of the geographic significances put forward by the applicant.
IV.3.11 Historical Characters — Paragraph 9(1)(l)
A trade-mark may have name or surname significance and, at the same time, call to mind an individual bearing the same name in the field of literature, art, music, history, politics, commerce, science or the like. If the examiners believe that the hypothetical Canadian would respond to the word as the name or surname of an individual who has died more than 30 years ago, the word is registrable. The examiners must also keep in mind how the name or surname is displayed or depicted on the mark. For example, for the hypothetical Canadian, the primary significance of the name Sir John A. MacDonald would be historical. The name MacDonald alone, however, would elicit a completely different response unless the mark as a whole clearly suggested an association with the historical character, as in a combination of some pictorial representation and the name of the person.
IV.3.12 Signatures — Paragraph 9(1)(l)
An application for registration of a trade-mark which is wholly or in part the signature of an individual must be accompanied by a letter of consent, unless it is the applicant's own signature. See paragraph 9(2)(a) regarding the use of a signature as a trademark. If the individual whose signature is used has died within the preceding 30 years, the applicant must submit acceptable authorization (e.g., from the executor of the individual's estate). A signature contravenes the provisions of paragraph 12(1)(a) and a disclaimer statement must therefore be inserted in the application form, unless the name per se has been previously registered by the applicant on the filing of
Note: If it is an actual signature then it follows that it must also be the name of a living individual or of an individual who died less than 30 years ago.
Examples
Actual Signature of Robert Moore:
- If Robert Moore is the applicant, a disclaimer of Robert Moore is required.
- If another entity is the applicant, a disclaimer of Robert Moore is required to overcome 12(1)(a), and a consent from Robert Moore (or from an executor of his estate if he died within the preceding 30 years) is needed to overcome 12(1)(e), if research discloses the signature contravenes 9(1)(l).
In the case of a trade-mark application covering a form of signature of a purportedly made-up or fictitious character, the examiners will still require the disclaimer of the name or surname if research discloses that it is the name of a living individual or one who has died within the preceding 30 years. However, in lieu of the consent under paragraph 9(2)(a) of the Act, the examiners will require a statement in the application to the effect that the signature is the created signature of a fictitious individual. For example, an application for the signature of the fictitious character "Ronald McDonald" requires the name to be disclaimed apart from the mark and a statement that the signature is the created signature of a fictitious individual.
Where it is discovered that the "signature" of a living individual is an artistic creation and not the actual signature of that person, a statement to that effect would be required in lieu of a consent under paragraph 9(2)(a). However, a consent under 9(2)(a) would be required to overcome paragraph 9(1)(k) if there are grounds to
Examples
- Signature is fictitious or an artistic creation. A disclaimer of the name is required to overcome 12(1)(a) if it is located as the name of a living individual or one who has died within the preceding 30 years. A statement that the signature is a created or fictitious signature is also required, to show that the mark does not contravene 9(1)(l) and 12(1)(e).
- Signature is the created signature of a well-known living individual. A disclaimer to overcome 12(1)(a) is required, as well as a consent, since it would appear to falsely suggest a connection with a living individual, which would contravene 9(1)(k). Also a statement that this is an artistic creation would be required to show that the mark does not contravene 9(1)(l) and 12(1)(e).