A recent decision of the Federal Court involved a dispute between Antonio Miranda (the “Father”) and Tony Miranda, one of his sons, (the “Son”) over the use of their surname as a trade mark.
The Father’s company applied to the Court seeking to have two trade marks registered by the Son’s company expunged pursuant to section 57 of the Trade-marks Act. The first registration related to the word MIRANDA for use in association with services consisting of the custom design and installation of windows, doors, porch enclosures, sunrooms and the like. The second registration related to a design presentation of which the dominant element was the word MIRANDA but included an outline of a house with a chimney on the roof.
The Father’s company alleged that the registrations were invalid because, among other things, they consisted of a word that was primarily the name or surname of an individual who was living.
Primarily Merely a Name or a Surname
The Act provides that a trade mark is not registrable if it is “a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years”. To decide whether the limitation applies it must be determined whether “the primary (chief) (principal) (first in importance) meaning of the word is merely (only) (nothing more than) a surname”. The question must be considered from the point of view of a person in Canada of ordinary intelligence and education. It does not matter that the name is rare or in common use as long as the mark is a name and nothing else, but there must be evidence that an individual bearing that name is living or has recently died.
Trade marks that are not registrable because they are surnames may become registrable through use. If a trade mark has been used in Canada by the applicant or its predecessor in title such that it has become distinctive at the date of filing of an application for its registration, it may be registered.
The Judge concluded with respect to the word mark that there was no question that MIRANDA was a surname and that the word mark would not be registrable under the Act. However, on reviewing the evidence, the Judge agreed with the Son that the word mark had acquired distinctiveness as of its filing date.
The Judge found that the design mark was not disqualified because the outline of the house with the chimney on the roof was sufficient to support the finding that it was not primarily merely a surname. In addition, there was also sufficient evidence of acquired distinctiveness as of its filing date.
While it is difficult to understand why the parties engaged in this litigation, the role of acquired distinctiveness in this context is clear.