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Famous names and trade-marks in Canada

March 2008

Fame isn't all its cracked up to be. Just try to register a trade-mark in Canada comprised of or incorporating the name of an individual deemed to be "famous".

In Canada, a trade-mark is registrable if it is not primarily merely the name or the surname of an individual who is living or who has died within the preceding thirty years. In practice, the Trade-marks Office will raise an objection only if there are at least 25 entries of the name or surname located in Canadian Telephone directories. However, 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 directory entries. Unfortunately, there is no case law or definition provided upon which to assess whether a threshold of fame has been met. This results in a considerable degree of variation within examination.

In order to overcome a name objection, evidence must be filed either showing that the trade-mark has acquired secondary meaning throughout Canada or that the mark is not without distinctive character in Canada. Ironically, while the perceived "fame" of the person or persons is sufficient to support an objection by the Trade-marks Office that the mark is unregistrable, that same fame is not recognized in establishing its distinctive character in Canada without proof of distinctiveness acquired through sales and advertising in Canada.

The provision of consent to the use and registration of the name or surname of a famous individual will in some jurisdictions render such a mark registrable, but not in Canada. Consent in Canada would only overcome an accompanying objection that the mark suggests a false connection with a living individual.

While fame is generally considered to be a trade-mark asset, famous names represent the possible exception.

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