JACK BLACK is Back: Federal Court Rules Internet Printouts Insufficient to Prohibit Marks based on Section 9(1)(k) of the Trade-marks Act

Published September 16th, 2014

Jack Black L.L.C. v Canada (Attorney General), 2014 FC 664 (Roy J.)

A recent decision of the Federal Court of Canada confirmed that objections under section 9(1)(k) of the Trade-marks Act (prohibition of adoption of marks falsely suggesting a connection with a living individual) require evidence of a significant public reputation in Canada.

Summary

On July 8, 2014, the Federal Court overturned a decision of the Registrar of trade-marks rejecting the application JACK BLACK for, inter alia, skin care products. The application was originally refused on the basis of section 9(1)(k) of the Trade-marks Act (the “Act”), which prohibits the adoption of a mark that “may falsely suggest a connection with any living individual.” The Registrar took the position that the mark was not registrable because it suggested a false connection with the “internationally renowned actor, comedian and musician” Jack Black.

Facts

The facts were not in dispute. The application was filed in 2009, but the mark had been in use in Canada since 2002. The mark had also been used in the United States since 1999 and an application for registration in the United States was made the same year. The mark had also already been registered in a number of other countries around the world.

During prosecution, the applicant argued that the assessment to be made under paragraph 9(1)(k) of the Act must be made at the time the trade-mark was adopted, which the applicant argued was in 1999 when it commenced use in the United States. Since the actor Jack Black did not have a significant public reputation at that time, the applicant argued there was no likelihood that the mark would mistakenly be associated with him.

The Examiner disagreed, finding that the relevant date of assessment was in 2002, when the products were first sold in Canada, and not when the mark was submitted for registration in the U.S. According to the Examiner, internet printouts referencing the actor Jack Black were sufficient to establish the actor had a significant reputation in Canada as of that date was rendering the mark unregistrable.

Arguments and Decision

On appeal to the Federal Court, the respondent, the Attorney General, was not interested in whether the applicant’s mark registered or not, but limited his arguments to two issues:

(i) that the word “adopt” in section 9 cannot include adoption outside of Canada in view of section 3 of the Act (which deems a mark to be adopted when use commences in Canada, when made known in Canada or when an application for its registration is filed in Canada); and

(ii)that the relevant date for assessing registrability in accordance with paragraph 12(1)(e) of the Act is not the date of adoption of the mark in Canada, as found by the Registrar, but rather the date of the decision.

The applicant maintained its position that the relevant date for consideration when assessing “adoption” of the mark was 1999, when the mark was adopted in the U.S., arguing that section 3 of the Act was a deeming provision and that the word “adopt” is not exhaustively defined in the Act. The applicant also filed new evidence on appeal, including evidence that:

(i) the name was coined without knowledge of anyone having the name Jack Black;

(ii) there has not been any complaint from anyone named Jack Black, including the actor by that name, to registration of the mark; and

(iii) the products are not new and benefit from fairly large circulation, having been advertised in widely circulated magazines in North America and sold online from well-known and high-end retailers.

The Federal Court found that the internet printouts relied upon by the Examiner and the Registrar did not establish how prominent the actor Jack Black is in Canada. The Court was “struck by how thin the information is in this case” and referred to other decisions of the Trade-marks Opposition Board that involved much stronger evidence, but where the marks were still found not to meet the standard required under paragraph 9(1)(k) of the Act to prohibit registration.

According to the Court, the evidence did not establish that there was public awareness in Canada of a person named Jack Black, let alone that the awareness reached a level of significant public reputation. Given the lack of evidence demonstrating that the actor Jack Black had a significant public reputation in Canada and considering the new evidence presented by the applicant, the Federal Court granted the appeal and ordered that the mark JACK BLACK be approved for advertisement.

The Court did not address whether the adoption of a trade-mark for the purposes of the Act could take place outside Canada or what the relevant date for assessing registrability is.

Practice Points

Objections based on section 9(1)(k) of the Act, whether by the Registrar or an opponent, require evidence of a significant public reputation in Canada. Mere internet printouts, which otherwise do not prove the prominence of the individual in Canada, will not suffice. While extensive survey evidence demonstrating the extent of the Canadian public’s awareness of the individual is one way to prove a significant public reputation, this is not required and probably not the most practical. Where articles or other website printouts are relied on for proof of reputation, these should be supported by other evidence showing the number of Canadians who may have read the articles or visited the website.