Out-Law / Your Daily Need-To-Know

The UK Trade Marks Registry has said that it will now assess applications for the registration of surnames as trade marks on the same basis as any other application, following a landmark ruling by the European Court of Justice last year.

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."

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