Canada: JACK BLACK Is Back: Federal Court Rules Internet Printouts Insufficient To Prohibit Marks Based On Section 9(1)(K) Of The Trade-Marks Act

Last Updated: September 30 2014
Article by Stephanie Roberts

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.


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, 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.


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:

  1. 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
  2. that the relevant date for assessing registrability in accordance with paragraph 12(1)(e) 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 was when assessing "adoption" of the mark was 1999, when the mark was adopted in the U.S., arguing that section 3 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:

  1. the name was coined without knowledge of anyone having the name Jack Black;
  2. there has not been any complaint from anyone named Jack Black, including the actor by that name, to registration of the mark; and
  3. 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) 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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.