3 mins | 669 words

by: Jamie-Lynn Kraft

When starting your business, one of the first questions you probably asked yourself was “What do I call it?”  You wanted to pick a name that was unique and made a promise to your customers that you stand behind your products. Since you are the face and soul of the company, it only made sense to put your name on the letterhead. While personal names and surnames can serve as brands (think of some of the most famous fashion houses in the world that are named after a designer), you might be surprised to learn that protecting those brands in Canada can be difficult.

The best way to protect your brand is with a trademark registration. A trademark registration is a certificate granted by the government which gives you the exclusive right to use your trademark anywhere in Canada with your products and services, and to prevent the use by your competitors of trademarks which are confusingly similar.

When considering whether to apply for a trademark registration, it is important to know that not every brand can be registered. The law which governs trademarks in Canada says that certain marks are not eligible for registration, at least not without showing that they have already developed a significant reputation. One type of mark which cannot be registered without establishing reputation is a mark which consists “primarily merely” of a name or surname of an individual who is living or has died in the past 30 years.

What does that mean? Well, if you choose your own surname as the brand for your business (e.g., “Smith”) and you seek to register your name as trademark, then the Canadian Trademarks Office will require you to prove that customers recognize the brand SMITH as pointing exclusively to you, such as through sales, advertising, media references and testimonials. If you cannot establish a reputation, you will be unable to register the mark and it could be very difficult to enforce your brand against others.

Your name (or surname) does not need to be commonplace in order for this barrier to exist. If the Canadian Trademarks Office identifies even one reference to the same name in directories or on social media, it can raise an objection to the registration of the mark.

But what if, when choosing your brand, you add something to your surname which describes your business (e.g., “Smith’s Carrots” and you sell carrots)? While doing so would remove the mark from the realm of being “primarily merely” a name or surname, it could nonetheless run into obstacles when seeking registration.

Another type of mark which is not eligible for registration without a prior reputation is a mark which lacks “inherent distinctiveness”, that is, a mark which does not point to a single source. The Canadian Trademarks Office deems a mark consisting of a name (e.g., “Smith”) plus a descriptive term (e.g., “Carrots”) to lack inherent distinctiveness since the mark could point to any person named “Smith” selling carrots.

So, while there is nothing wrong with using your own name as the brand for your business, if the brand consists solely of your name (or surname) or of your name and a descriptive term, it could be very difficult to protect it through registration. Instead, you might consider adding unique, coined or arbitrary words to your name to create a distinctive, registrable brand.

For further information please contact a member of Smart & Biggar’s Trademark & Brand Protection team.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

__

 

Author:

Jamie-Lynn Kraft, Senior Associate

Jamie-Lynn’s trademark counselling extends beyond protecting brand owners’ valuable IP assets. With a passion for helping businesses grow, Jamie-Lynn advises her clients on strategies to harness the full potential of their brands.