Name or surname of an individual
Mastering the Law of TrademarksUnder Canadian trademark law, a trademark cannot be registered if it is primarily merely the name or the surname of an individual who either is living or has died within the preceding thirty years.
One of the policy reasons behind this prohibition is that no one should be allowed a monopoly on a name. An individual may use their own name with their business but may not restrain another individual bearing the same name from doing likewise.
Canadian courts have established a two-step process for determining whether a mark falls within the ambit of this prohibition:
- The first consideration is whether the mark is the name or surname of a living individual or an individual who has recently died.
- If this condition precedent is met, consideration is then given to whether the mark would be perceived by the average Canadian as
primarily merely
a name or surname rather than something else.
A mark that would be perceived as primarily merely a name or surname may be registered only if it has acquired distinctiveness.
Further Learning Resources
Canada's Trademarks Act governs the registration of trademarks. By virtue of paragraph 12(1)(a) of the Act, no one can get a monopoly for "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". Paragraph 12(1)(a) must be read in conjunction with subsection 12(2), which provides an exception for trademarks that have become distinctive at the date of filing an application for their registration. Applications under subsection 12(2) are territorially restricted pursuant to subsection 32(2).
The Trademarks Examination Manual is published by the Canadian Intellectual Property Office (CIPO) and includes an entry on paragraph 12(1)(a) of the Trademarks Act (at §IV.5 of the Manual).
The material made available on this website does not constitute legal or professional advice and should not be relied upon as such. Always obtain legal advice promptly in deciding an appropriate course of action for your particular situation.