October 2004
Is your surname a trade mark?... It soon could be!
The UK Registrar and a number of European trade mark offices will be forced to amend their current practice guidelines on assessing the registration of common surnames, following the groundbreaking ruling from the ECJ, that common surnames can qualify as trade marks, by employing the same criteria as any other trade mark.
The ruling follows the refusal of the UK Registrar in May 2001 to register the surname Nichols to a British company. In applying the phone book criterion (which looks at the number of times a surname is listed in the telephone directory), it was held that the surname and its phonetic equivalents were too common to distinguish a trader in the food and drinks market from others. The decision was appealed to the High Court of Justice, which held that securing a surname as a trade mark would allow an unfair advantage in favour of those who first secured the name over other traders using the same name. Subsequently, the ECJ ruled that firstly, refusal of common names could not be justified in order to protect other applicants, and secondly, Registrars had to assess the distinctiveness of a surname under 3 (1) (b) "in accordance with the criteria applicable to any sign covered by Article 2 of the said Directive", which was to be assessed by the relevant products and the public perception. The case established that the assessment of surnames as trade marks do not fall under a different criteria of assessment and must therefore come under the same umbrella of assessment as any other trade mark.
BRIFFA Comment:
The effect of the ruling is that trade mark registries within the EU must treat applications for the registration of a surname in the same way as any other application, whether it is common or not. However, beyond the procedural effect, it is unlikely that the ruling will have a major impact on the outcome of individual applications. Unusual names may have an inherent advantage over more common ones but they will all have to be considered in the same way by the Registry. Distinctiveness is the foundation of registrability. Consequently the potential distinctiveness of a surname depends, in relation to the goods or services in respect of which registration is sought, on what the relevant consumer thinks, that is, how the public react to a particular surname will be an important indicator of the merits of an application. The best advice remains: use and register distinctive and unusual names for your business, products and services.