It was widely reported last month that the Mexican Institute
of Industrial Property (“IMPI”) had recently denied an application by wanted
drug kingpin Joaquin “Chapo” Guzman to trademark his name. According to reports,
the IMPI had also denied two applications for the marks “Joaquin El Chapo
Guzman” and “El Chapo Guzman” in 2011.
As of February 10, 2016, there are no Canadian trademark
applications pending for “El Chapo”, while the United States Trademark Database
does have two pending applications and one registration in association with
graphic T-shirts. A key distinction is that the owners of these marks do not
appear to be related to Mr. Guzman.
Under Canadian trademark law, there is a good possibility
that the proposed marks “Joaquin El Chapo Guzman” and “El Chapo Guzman” would
also have been denied on the basis that the marks are “primarily merely the
name or the surname of an individual who is living or has died within the
preceding thirty years” regardless of whether the applicant is related to Mr.
Guzman. It is unlikely however that a similar objection to the proposed mark “El
Chapo” would be made based on the Canadian Trademark Office’s current
practices.
Although Canada’s Trademarks
Act does include a provision at Paragraph 9.1(j) prohibiting the
registration of any “scandalous, obscene or immoral word or device”, it is
unlikely this prohibition would be raised during examination based on the prior
jurisprudence. The threshold on whether a mark is scandalous, obscene or
immoral appears to be fairly high, based on the Registrar’s decision in 2014 to
issue a Notice of Approval for the design mark F
CANCER & Design.[1]
It remains to be seen whether “El Chapo” can be registered
as a trademark in Canada, although the Canadian registration for BILLY THE KID
is consistent with the U.S. position that such marks are registerable.
[1] Note:
this application was successfully opposed by an individual who was able to
asset superior common law rights to the mark
