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Can names be registered as trade marks

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The ECJ’s judgment in Case C-404/02, Nichols plc v Registrar of Trade Marks (2004) addressed the distinctive character of common surnames.

The Court confirmed that the assessment of the distinctive character of a surname must be carried out according to the specific circumstances of the case, and that (like all other types of marks) the presence or absence of distinctive character depends upon the perception of relevant consumers, having regard to the essential function of a trade mark. This function is to act as an indicator of trade origin, this aids both consumers of branded goods and the trade mark proprietor, as follows,

  • The trade mark acts as an indicator of both quality and reliability, protecting consumers from confusion or deception in the marketplace.
  • The trade mark can be enforced to protect the mark’s proprietor against certain acts of unfair competition.

Trade marks have long been used by manufacturers and traders to identify their goods and distinguish them from goods made or sold by others. They become associated with quality and consumer expectations in a product or service. Thus, trade mark rights will usually be vigorously asserted and defended.

This essential function of a trademark becomes somewhat blurred when dealing with marks which consist of or incorporate names.

It appears that there may be circumstances in which a common surname as such lacks the necessary distinctive character for registration as a trade mark.

The Court in the named case above provided no guidance as to what specific factors may be properly taken into account in assessing the distinctive character of a common surname. However the Court did state that it regarded an assessment of distinctiveness based upon:

  •  A predetermined number of persons with the same name , above which that name may be regarded as devoid of distinctive character,
  •  The number of undertakings providing products or services of the type covered by the application for registration, or
  •  The prevalence or otherwise of the use of surnames in the relevant trade as applying ‘stricter criteria for assessment of distinctiveness’ as compared to the criteria applied to other types of trade marks.

Corinne Day


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



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Article Published/Sorted/Amended on Scopulus 2007-06-28 22:22:11 in Legal Articles

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