What's in a name? Has Canada made it more difficult to register name and surname marks?

The Canadian Intellectual Property Office recently revised its practice notice regarding name and surname objections.

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 surname of an individual who is living or who has died in the past 30 years. Canadian courts have established the following two-part test to determine a trademark's registrability under Paragraph 12(1)(a):

• Is the trademark the name or surname of a living individual or an individual who has died in the past 30 years?
• If the answer to the first question is affirmative, the registrar must determine whether – in the mind of the average Canadian consumer – the trademark is primarily merely a name or surname, rather than something else.

Previously, examiners had 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 before a Paragraph 12(1)(a) objection can be 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 trademark's registrability. 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; therefore, an increase in such objections can be expected in future.

For further information on this topic please contact Jennifer Ponton at Smart & Biggar/Fetherstonhaugh by telephone (+1 416 593 5514) or email ([email protected]). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.

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