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