Paragraph 12(1)(a) of the Act — Name or Surname

Publication Date: 2000-08-16

Paragraph 12(1)(a) of the Trade-marks Act stipulates that a trademark is registrable if it is not a word that is primarily merely the name or the surname of an individual who is living or who has died within the preceding thirty years.

When confronted with a mark composed of a word or words that have name or surname connotations, research must be conducted to determine whether it is in fact the name or surname of a living individual (Gerhard Horn Investments Ltd. v. Registrar of Trade Marks 73 C.P.R. (2d) 23). Commencing immediately, an objection under paragraph 12(1)(a) will generally only be considered if there are at least 25 entries of the name or the surname located in Canadian telephone directories. However, once the 25 entries have been located, the test to determine primary meaning must be applied. The examiners must determine what in their opinion would be the response of the general public in Canada to that word. If they consider that a person in Canada of ordinary intelligence and of ordinary education in English or French would respond to the word by thinking of it as the name or the surname of an individual who is living or who has died within the preceding thirty years, an objection under paragraph 12(1)(a) will be raised.

Where research discloses that the mark consists of the name or surname of a famous individual, an objection may be raised notwithstanding the existence of less than 25 entries in Canadian directories.

This practice also applies to pluralized surnames and surnames in the possessive form. An objection will only be considered if there are at least 25 entries of the surname in Canadian directories.

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