The Trade Marks Directive does not stipulate that surnames be treated differently than any other mark. However, the UK Registry generally refuses to register ordinary surnames as trade marks, due to the following provision of UK trade mark law:
"In judging the capacity of a surname to distinguish the goods or services of one undertaking the Registrar will consider:
a. the commonness of the surname;
b. the number of undertakings engaged in the trade and from whom the goods or services specified in the application can be said to originate.
For this purpose the number of relevant undertakings includes manufacturers, designers and specialist retailers of goods, and providers of services."
This inconsistency caused a reference to the European Court of Justice. It arose in a dispute over an application for a trade mark by Nichols plc, the company behind the Vimto brand of flavoured fruit cordial. It wanted to register the word "Nichols" in relation to automatic vending machines and products. The question was whether the surname "Nichols" is sufficiently distinctive to be registered as a trade mark.
The application was granted in respect of the vending machines, but not in respect of the products. The UK Registry's reason was that Nichols is a very common name. It noted that it appears, with slight variations, 483 times in the London telephone directory.
It also considered that the products – food and drink – form part of a very large market, which means that consumers would not easily be able to identify the products as belonging to Nichols plc. On the other hand, the vending machines form part of a specialised market, and could be more easily identified as belonging to Nichols plc.
Nichols appealed to the High Court and the judge stayed his decision pending a ruling from the European Court. This was delivered last week, stating that an application for the registration of a surname as a trade mark must be considered on the same basis as any other application, i.e. it must be distinctive within its sector.
According to the Court, the Directive does not distinguish between different categories of trade mark and "the criteria for assessment of the distinctive character of trade marks constituted by a personal name are therefore the same as those applicable to the other categories of trade mark".
In some categories of trade marks it might be more difficult to establish that a trade mark has a distinctive character, but the mere fact that it is more difficult does not justify an assumption that marks in the category cannot acquire a distinctive character.
Accordingly, "In the same way as a term used in everyday language, a common surname may serve the trade mark function of indicating origin and therefore distinguish the products or services concerned," said the Court.
The case will now go back to the UK, for a ruling by the High Court.