Paragraph 9(1)(k) of Canada’s Trademarks Act prohibits a person from adopting a trademark consisting of, or so nearly resembling as to be likely to be mistaken for, “any matter that may falsely suggest a connection with any living individual”. The recent decision of Canada’s Federal Court in Jack Black LLC v The Attorney General of Canada, 2014 FC 664, confirms that the standard to be met in order to sustain an objection on this basis is extremely high, as it must be established that the living individual in question enjoyed a “significant public reputation” across Canada when the trademark was adopted.
The appellant was successfully represented by Mark Evans of Smart & Biggar’s Toronto office.
The appellant sought an order setting aside the Registrar’s decision and directing that its trademark application for JACK BLACK (the “Trademark”) be approved for advertisement in the Canadian Trademarks Journal. Before allowing the appeal, the Court noted that the appellant’s uncontroverted affidavit evidence established that:
- the Trademark was adopted originally without any knowledge of the actor, Jack Black, and its use has never been challenged, in Canada or elsewhere, by the actor or anyone else;
- the Trademark has been registered in many other countries and no issues have ever been raised; and
- there is not a single instance of the personal care and grooming products bearing the Trademark being purchased on the mistaken belief that they would be in any way connected to the actor.
After observing “how thin the information is” in support of the Registrar’s decision to refuse the application, the Court found that the evidence filed by the appellant on appeal would have had a material impact on the Registrar’s decision and shown even more clearly that the Trademark would not falsely suggest the connection with Jack Black that the Trademarks Office Examiner “suspected on the basis of [I]nternet printouts.”
The Court thus substituted its own opinion for that of the Registrar, and allowed the appeal, noting that:
the evidence presented on appeal … would tend to confirm that there is no false suggestion of a connection with a living individual after more than 10 years of use of this Trademark in Canada and elsewhere.
The combination of lack of probative evidence of significant public reputation in Canada, to support the Registrar’s conclusion with respect to the application of paragraph 9(1)(k) and new evidence, which tends to show that there is no such connection in Canada, carries that the appeal must succeed.
In finding that the Registrar’s decision to refuse the application was neither correct nor reasonable, the Court reviewed the Canadian jurisprudence wherein the connection with a living individual was found not to be robust enough to sustain an objection under paragraph 9(1)(k). It held that the Internet printouts furnished by the Registrar fell short of being commensurate with what was available in previous cases, in which even much stronger and more extensive evidence failed to convince the Court that a particular living individual had a “significant public reputation” in Canada. Citing with approval the leading authority on paragraph 9(1)(k), Bousquet v Barmish Inc (1991), 37 CPR (3d) 516 (FCTD), aff’d (1993), 46 CPR (3d) 510 (FCA), the Court therefore ruled that the Registrar had failed to establish that Jack Black had a public reputation in Canada sufficiently significant to conclude that use of the Trademark would suggest a connection with the actor: “it has not been established that there is a Canadian public’s awareness of a person named Jack Black, let alone that that awareness reaches a level of significant public reputation.”
This decision serves to remind litigants and, in particular, parties opposing trademark applications, that the standard to be met in order to sustain an objection under paragraph 9(1)(k) is extremely high. In numerous cases, such as those reviewed by the Court, the evidence furnished in support of a particular living individual’s “significant public reputation” has been found to be lacking. Canadian jurisprudence suggests that, while it is not the only way to establish a significant public reputation under paragraph 9(1)(k), extensive survey evidence as to the extent of the living individual’s personal notoriety in Canada makes for perhaps the best and most convincing evidence. Similarly, affidavit evidence, of the kind furnished by the appellant in this case, may demonstrate that a trademark has never falsely suggested a connection with a living individual, and is therefore unlikely to do so in the future.