For many businesses, a family name is more than just an identity; it is their legacy. Think of the countless companies built around surnames, where founders have proudly placed their names on storefronts, packaging, goods, and advertising as a sign of reputation, trust, and therefore the goodwill that has developed over the years in business. Yet under the Trademarks Act (the “Act”), registering a surname as a trademark is not always as straightforward as it would seem.

Section 12(1)(a) of the Act states that a trademark is not registrable if it is “primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years”.

Why Surnames Are Treated Differently

The Act aims to prevent one trader from monopolizing a surname that others may legitimately share. Unlike invented words or coined terms, surnames are part of everyday identity. If a company could easily register a common surname as a trademark, it could prevent others with the same name from using it in good faith for their business.

Test for Deciding “Primarily Merely”

The key question in determining registrability is whether the proposed mark is the name or surname of a living individual or an individual who has died within the preceding thirty years, and if that answer is affirmative, whether the trademark would be seen as “primarily merely” a surname by the average Canadian consumer.

Historically, examiners relied on finding at least 25 listings in a Canadian phone directory to raise a name or surname objection. Since 2019, they have dropped the minimum listing requirement due to limitations in these directories and instead rely on broader Internet searches.

As stated by Jackett J. in Standard Oil Co. v. Canada (Registrar of Trade Marks), the test is “… what, in the opinion of the respondent or the Court, as the case may be, would be the response of the general public of Canada to the word”: [1968] 2 Ex. C.R. 523.

In Canada (Registrar of Trade Marks) v. Coles Book Stores Ltd., there was a conflict between the word that was well-known to the general public in Canada as a surname and the dictionary definitions of the words “cole” and “coles” which were rare and obsolete. It was held that although COLES has alternative meanings, the average Canadian would think of the trademark as primarily merely a surname: [1974] S.C.R. 438.

In Elder's Beverages (1975) Ltd. v. Canada (Registrar of Trade Marks), it was held that ELDER was both a surname and a dictionary word. It cannot, therefore, be primarily merely a surname, as the average Canadian is equally or more aware of the dictionary word for “elder”: [1979] 2 F.C. 735.

In Galanos v. Canada (Registrar of Trade Marks), it was held that although GALANOS was the applicant's surname, it is extremely rare and carries no definition in English or French. The term is more likely to be seen by the average Canadian consumer as an invented word sought to be used as a trademark: 69 C.P.R. (2d) 144. 

As such, if by applying such a test one reaches the conclusion that a person in Canada of ordinary intelligence and of ordinary education in English or French would be just as likely, if not more likely, to respond to the word by thinking of it as a trademark of a business as to respond to it by thinking of it as being the surname of one or more individual then, such a mark is not primarily merely a name or a surname and is consequently registrable.

Not Inherently Distinctive

Even if a proposed trademark overcomes the prohibition against being “primarily merely” a surname, businesses may still encounter another obstacle, namely, a lack of distinctiveness.

Under Section 37(1)(d) of the Act, a trademark application may be refused if it is not distinctive. Since surnames are commonly shared by many individuals and businesses, they are often viewed as lacking distinctiveness. A trademark is distinctive if it clearly identifies and distinguishes a business’s goods or services from those of others.

In practice, this means that a surname may not immediately function as a trademark in consumers' eyes. A popular surname may simply be perceived as a family name rather than an indicator of a single commercial source. For that reason, there may be a question whether a surname truly distinguishes one trader’s goods or services from those of others operating in the same marketplace.

What This Means for Family Businesses

For companies built around family heritage, the rule does not necessarily prevent the use or even registration of a surname as a trademark. Instead, it creates a hurdle that businesses must overcome through long-term use in the market or through the addition of distinctive elements:

• Combining the surname with other elements: adding distinctive words, logos, or design features can sometimes help move the mark beyond being “primarily merely” a surname. Examples of marks that may avoid being primarily merely a surname include: MCIVOR & SONS; MCIVOR SISTERS; and compound surnames commonly used for partnerships such as MCIVOR & GLAZIER.

• Unfortunately, simply combining a surname with a descriptive term, such as MCIVOR LAW OFFICE and MCIVOR INC., will not overcome the objection that the mark is not inherently distinctive.

• However, a surname can become registrable if it acquires distinctiveness over time so that consumers associate it with a particular source of goods or services: section 12(3) of the Act. An application filed on this ground requires supporting affidavit evidence demonstrating long-term use of the mark and a significant volume of sales and/or advertising before the filing date in the regions of Canada for which registration is sought. Unfortunately, the cost of preparing such affidavit evidence will significantly increase the cost of a trademark application.

Other Types of Names

A given name like LUKE is registrable as a trademark.

A combination of a given name and surname, such as LUKE MCIVOR, would not be registrable as it is the exact name of a living person and it is not unique. However, it may also become registrable if it becomes distinctive of a specific business after extensive use in Canada. For example, the name of a famous individual can be registered with their consent AND evidence that the name is distinctive for the associated goods and services at the date of filing. TAYLOR SWIFT was registered (TMA1180950) for a variety of entertainment services after filing evidence of sales figures, concert attendance, social media followers and more in relation to the goods and services listed in the application.

The signature of an individual can be registered as a trademark with the consent of the individual as per Section 9(1)(k) and 9(1)(l) of the Act. An example is Dwayne Johnson’s signature: TMA1306709.

It is also possible to register a fictitious name, a nickname or a stage name. In Gerhard Horn Investments Ltd. v. Registrar of Trade Marks, the applicant filed an application to register the mark MARCO PECCI. There was no individual with that name, and extremely limited evidence of individuals with the surname Pecci. The court therefore allowed the registration of the trademark MARCO PECCI, as it was clear it was a fictitious name: (1983) 73 C.P.R. (2d) 23.

In Jack Black L.L.C. v. Canada (Attorney General), the registrar refused an application filed in 2012 to register JACK BLACK as a trademark per 12(1)(a) and 9(1)(k) of the Act on the grounds that JACK BLACK was then an internationally renowned actor, comedian and musician. However, on appeal to the Federal Court, the applicant provided evidence that the name was coined without any knowledge of the actor, that there was no false connection to the actor, and that the mark has been used in the US since 1999, and in Canada since at least 2002. The court determined that because the actor Jack Black did not have a significant public reputation in the US or Canada (2002) when the mark was adopted in each jurisdiction, it was registrable as a fictitious name: 2014 FC 664.

Finally, the names and surnames of historical, cultural, literary or political characters who died more than 30 years ago can be registered. An example being LAURA SECORD for chocolate: TMA209560.

Importance of Registration

Registration in Canada grants the owner the exclusive right to use the trademark across Canada in association with the goods and services listed in the registration. A common law or unregistered trademark is entitled to protection only in the geographic region where it has an established reputation. In addition to giving notice to the public of your exclusive right to the trademark, a registration sets up a legal presumption that the registrant is the lawful owner of the trademark. This is especially helpful in protecting that right when a dispute subsequently arises.

For entrepreneurs whose brand carries a family legacy, your surname can become a valuable trademark, but only when Canadian consumers regard it as more than just a surname.

 

Disclaimer: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.