Using the name of your surname as a Trademark

Section 12(1)(a) of the Trademarks Act prohibits Trademarks that are “primarily merely the name or the surname of an individual who is living or has died within the proceeding 30 years. These provisions are discussed in the accompanying video.

Transcript of above video
For persons who are considering using their last name as a trademark, there are a few things you should know. The first thing you should know is the Trade-marks Act has a provision under Section 12 (1) (a), that says “a word that is primarily merely the name or surname of an individual is not protectable by way of trademark”. That stops people with a last name like mine (Thompson) from obtaining trademark protection. Now there are some people who have names like “Singer” or “Bird” and those also have dictionary definitions, and because of that they are outside those rules, but most of us are the “Thompsons” of this world, and they can’t get protection. It is interesting to know that there is no prohibition against obtaining trademark protection for first names. So, my first name is “Doug”. I could get protection for “Doug’s [whatever]” for a trademark. In addition, I could register my full name. So my full name is “Douglas B. Thompson” and I could register that if I chose to do so. Now, for those of you who are looking around and saying “What is this guy talking about?”- you can see all sorts of exceptions; for example, “McDonald’s Restaurants”. There is a section in the Trade-marks Act again (Section 12 (2)) which basically indicates that when your trademark has become well known enough, you can become an exception to the rule. The problem is when you start out, you are not well known – it takes years, often decades, in order to build up the trademark sufficiently that you will meet the tests. If you were able to obtain trademark protection for your last name, don’t think you can go and use that trademark against other people with the same last name. There is a provision in the Trade-marks Act under Section 20 which indicates the registration of the trademark does not prevent a person from making any bona fide use of his or her personal name as a trade name. So, that gives you a few points to go on with respect to the use of your name as a trademark, and you should keep those in mind when choosing your trademark.