How Well-Known is Jack Black in Canada?
Par Sarah D. Pinsonnault, avocate
By Sarah D. Pinsonnault
For a trade-mark to be registrable in Canada, it cannot, inter alia, consist of the name or surname
of a living individual or one who has died within the preceding thirty years
pursuant to section 12(1)(a) of the Trade-marks
Act. In Jack Black L.L.C. v. Canada (Attorney General), 2014 FC 664, the
trade-mark at issue was that of the name JACK BLACK (the “Trade-mark”). For
those of you whom the name “Jack Black” does not ring a bell, he is an American
actor who has starred in such films as King Kong, Kung Fu Panda, and Tropic
Thunder (just to name a few). In light of this, the Registrar of Trade-Marks deemed
JACK BLACK non-registrable “since JACK BLACK is an internationally renowned
actor, comedian and musician”. This decision therefore consists of the judgment
rendered by the Federal Court upon the appeal by the Applicant of the Registrar’s
The Applicant first began using the Trade-mark in Canada in 2002 to sell
its line of skin-care and hair-styling products. It apparently had no knowledge of anyone
having the name Jack Black when it initially adopted the Trade-mark.
One of its arguments before the Federal Court was that there was no risk
that Canadians would associate its Jack Black trade-mark for grooming products with
the actor, Jack Black:
Switching gears, the applicant submits that the actor Jack Black did not
establish a substantial reputation in Canada such that it cannot be said that
the Trade-mark is so nearly resembling as to be likely to be mistaken for any
matter that may falsely suggest a connection with any living individual.”
The Federal Court noted that a substantial amount of evidence must be
presented in order to contest the adoption of a trade-mark pursuant to s. 9(1)(k)
of the Trade-marks Act. Essentially,
in order for the mark to be non-registrable under s. 12 of the Trade-marks Act, the evidence must prove
that the trade-mark falsely suggests a “connection with any living individual”.
In the case at bar, the Federal Court was of the opinion that the information
considered by the Registrar, in comparison with the new evidence that was adduced
by the Applicant on its appeal, was insufficient to “establish how prominent
the living individual [Jack Black] is in this country”:
When one compares the information used by the Registrar in this case to reach a
conclusion to that made available in other cases involving section 9 of the
Act, one is struck by how thin the information is in this case.
Actually, with much stronger evidence, cases fell short of the standard
required in order to meet the test of paragraph 9(1)(k) of the Act and thus
prohibit the mark.
There is nothing of the sort before this Court in this case. The
un-contradicted evidence in this case is that no connection with the actor Jack
Black was ever intended, there has not been any complaint ever since the use of
the Trade-mark started in the US in 1999, in Canada since 2002 and elsewhere
where the Trade-mark is already registered. Internet printouts constitute the
basis for the decision [of the Registrar] in this case, without any evidence
commensurate with what was available in Waltrip,
Aykroyd, or Carson. To put it simply, 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.
Not only is there an absence of such proof but the evidence presented on
appeal, which has been tendered by the applicant without objection, 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 Trade-mark in Canada and
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.
The new evidence would have had a material impact on the Registrar’s decision
in showing even more clearly that the Trade-mark may not falsely suggest the
connection with an individual that the examiner suspected on the basis of
internet printouts.” (emphasis added)
The appeal was therefore granted and the application for the registration
of the Trade-mark was approved.
To read this decision in its entirety, click here.