Until recently, the Registry generally refused to register
ordinary surnames as trade marks due to a provision in UK trade
mark law that allowed the Registrar to consider the commonness of
the surname and the number of undertakings engaged in the trade to
which the application for registration relates.
This was deemed inconsistent with the EU Trade Marks Directive,
which does not stipulate that surnames be treated any differently
to any other mark.
A test case was therefore taken to the European Court of
Justice. It related to 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.
Delivering its ruling in September, the European Court found
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".
The Registry Amendments
The UK Registry issued a practice amendment note earlier this
month, confirming that the assessment of an application for the
registration of a surname as a trade mark must be carried out on
the same basis as for any other application.
General assessment criteria relating to the commonness of the
surname and the number of undertakings engaged in the trade to
which the application for registration relates are stricter than
those imposed on other applications, says the practice note. The
Registrar will therefore no longer raise objections to the
registration of surnames as trade marks on these grounds alone.
In exceptional cases the Registrar may take account of
"generally known" facts – for example, that Smith is a very common
name – but usually the Registrar will be reliant on third parties
placing relevant facts relating to the use of the name before
him.
The practice note also states that "the mere existence of one or
two unconnected undertakings with the same name in the same market
sector will not automatically justify an objection".
Surnames with other meanings, such as "Brown", may found an
objection, while full personal names, and surnames with initials
will be treated in the same way as surnames.
The practice note also clarifies the position relating to the
use of single forenames as trade marks.
Formerly the Registrar has prevented the use of forenames as
trade marks for such businesses as hairdressers and tea shops as
their use is very common in many unrelated undertakings at the same
time.
According to the practice note, however, an objection will now
only be justified if "it can be inferred from specific evidence
that consumers would not perceive the name as distinguishing the
goods and services in question as being those of one
undertaking."
