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How to Register a Famous Name as a Trademark in Canada

Registering the name of an individual as a trademark in Canada poses unique challenges. These challenges frequently impact celebrities wanting to protect their famous name in Canada. Currently, famous names are only registrable as trademarks if the applicant can establish by way of evidence that the applied-for name has “acquired distinctiveness”[1] or “is not without distinctive character”[2] in Canada and so long as the other statutory requirements are met. In general, the evidentiary burden imposed on such applicants decreases as the level of fame of the individual increases.  Unfortunately, recent amendments to Canada’s Trade-marks Act will make it even more difficult to secure registration for a famous name used as a trademark in Canada.

The difficulty in registering names as trademarks stems directly from Canadian trademark law. Under paragraph 12(1)(a) of the Trade-marks Act, a trademark is not registrable if it is “primarily merely the name or surname of an individual who is living or has died within the preceding thirty years”. Obtaining a consent to use and register the name from the named individual is not enough to overcome a paragraph 12(1)(a) objection.  However, the Trade-marks Act does provide mechanisms to overcome such an objection, as described in more detail below, and many individual and celebrity names are registered in Canada.  One example is the well-known American actor and singer, Robert John Downey Jr. who played the role of Marvel Comics’ superhero Iron Man. ROBERT DOWNEY JR. is the subject of trademark registration No. TMA878724 which covers motion picture films, pre-recorded video discs and downloadable video recordings as well as entertainment services.

The Trade-marks Act includes two mechanisms for overcoming a paragraph 12(1)(a) objection, as set forth in subsection 12(2) and section 14. To benefit from subsection 12(2), the applicant must furnish evidence to show that the applied-for name had been used in Canada as a trademark by the applicant or its predecessor in title so as to have become distinctive as of the date of filing an application for its registration.[3] To benefit from section 14, the applicant or its predecessor in title must have registered the name as a trademark in or for its country of origin, and must furnish evidence which shows that the trademark is “not without distinctive character” in Canada.[4] In the case of the application to register the trademark ROBERT DOWNEY JR., the applicant successfully overcame a paragraph 12(1)(a) objection by claiming the benefit of section 14.

To benefit from either subsection 12(2) or section 14, the applicant must submit sufficient evidence to establish the applicable criterion of “acquired distinctiveness” or “not without distinctive character” is met. This evidence is submitted in the form of an affidavit or statutory declaration which typically includes information such as:

  • The goods and services with which the trademark is used, both in Canada and abroad.
  • The length of time the trademark has been in use, both in Canada and abroad.
  • The countries in which the trademark has been used.
  • The countries in which the trademark has been registered.
  • The approximate quantity and value of sales of products and services in association with the trademark for a reasonable period of time, e.g. the preceding five years, both in Canada and abroad.
  • The channels through which the products or services are distributed in Canada, particularly if the product is sold by major retailers.
  • Details of the extent and value of advertising under the trademark, both in Canada and abroad, including representative examples. For example, this could include the channels through which advertising is carried out, e.g. names of publications in which advertisements are placed, and the relevant circulation or readership figures for those channels.
  • Any significant publicity given to the trademark, particularly in respect of Canada.

In general, the burden of adducing evidence is lighter for applicants relying on section 14 since the expression “is not without distinctive character” is a lower threshold and does not require the applied-for mark to have been “used” in Canada as of the filing date.[5] The trademark can simply be used extensively in another country such that there has been significant spillover advertising in Canada. However, the standard of “acquired distinctiveness” under subsection 12(2) requires that the name be “used” extensively in Canada so as to have acquired a secondary meaning by the time the trademark application was filed. Further complicating matters, if the applicant cannot provide evidence to establish that such applied-for name has become distinctive under subsection 12(2) throughout Canada, the registration may be restricted to certain territorial areas in Canada in which the applied-for name is shown to have become distinctive as a trademark.[6]

Currently, section 14 provides an advantage to foreign applicants with a foreign registration over domestic applicants. However, amendments to the Trade-marks Act are expected to come into force sometime in late 2018 or early 2019 repealing section 14.  Once in force, pending applications which have not yet been advertised in the Trade-marks Journal will no longer be able to rely on the less onerous section 14 option for overcoming a paragraph 12(1)(a) objection.

Given the amount of information required to claim the benefit of subsection 12(2) or section 14 as mentioned above, there is generally a certain level of resistance from applicants to provide such evidence. One reason for resistance is confidentiality. All documents filed with the Canadian Intellectual Property Office become part of the public record and so all of the information contained in the required affidavit or statutory declaration will be released to the public if so requested. Another reason for resistance is cost. While the amount of evidence necessary to establish that a trademark has “acquired distinctiveness” or is “not without distinctive character” varies in each case, the time required by a trademark attorney to compile such evidence and to prepare an affidavit or statutory declaration is fairly significant.

Unfortunately, in some cases, even if the applicant is willing to adduce evidence to claim the benefit of either subsection 12(2) or section 14, the evidence may not be sufficient to establish that the “acquired distinctiveness” or “not without distinctive character” requirement is met. For example, the name may not have been used as a trademark per se but merely as a name. The name is used as a “trade-mark” only if it is “a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others”.[7]  A name is not considered to be used as a trademark per se if, for instance, the name is not displayed in a manner so as to distinguish it from the surrounding text or if the name is not marked on the applied-for goods themselves or on the packaging of such goods at the time of transfer or in the performance or advertising of the applied-for services.

To overcome the above disadvantages and obstacles, alternatives to registering a famous name include, for example, registering the name in combination with a design element or other additional matter. The addition of other matter is generally sufficient to avoid a paragraph 12(1)(a) objection because a trademark is only refused if it is “primarily merely” a name or surname.

While registering the name of famous individuals as trademarks in Canada poses challenges, different options may be available to those interested applicants who wish to protect famous names as trademarks in Canada. If you wish to obtain a trademark registration for a name of an individual, you should first consult a trademark lawyer to discuss possible strategies for your particular scenario.

[1] Trade-marks Act, RSC 1985, c T-13 (the “Trade-marks Act”), s 12(2).
[2] Ibid, s. 14.
[3] Ibid, s 32(1).
[4] Ibid, s 31(2).
[5] “Use” is defined under section 4 of the Trade-marks Act: “A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred. A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.”
[6] supra, s 32(2).
[7] supra, s 2, definition of “trade-mark”.

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