Trademark - Names and Surnames in the UK

Trademark Question


A prospective client of Brand Certain approached us to ask about whether their website name "charlieinman" could be registered as a trademark. Charlie had said that some people in his business had indicated that names could not be trademarked.


Answer


Some jurisdictions (e.g. Australia – click on Trademarks for further info), are stricter than others as to the acceptance of names or surnames as trade marks. The UK however is quite relaxed on this issue. The case in question relates to EU Trade Marks Directive (the “Directive”). However please note that this Directive has been replaced by Directive 2008/95.


The position in the EU - Names and Surnames as Trademarks


A key judgment of the European Court of Justice (the “Court”) is that of Nicols Plc v the Registrar of Trade Marks. Under article 2 of the
Directive trade marks must be distinct so as to be “capable of
distinguishing" the services or goods of one business from those of
other.


The Court was asked to determine whether a single surname would be “devoid of any distinctive character” (article 3(1)(b)) of the Directive) per se.


In the judgment the Court stated that: “the distinctive character of a trade mark constituted by a surname, even a common one, must be carried out specifically, in accordance with the criteria applicable to any sign
covered by Article 2 of that directive, in relation, first, to the
products or services in respect of which registration is applied for
and, second, to the perception of the relevant consumers”


In other words, the assessment of distinctiveness must therefore take into consideration the specific circumstances of the case. This means paying regard to the relevant consumers and the functions that the
trade mark need perform.


Trademarks and Surnames – UK


The UK Examiner must pay attention to all circumstances for all trade mark applications. The general postion is that surnames will encounter no objection even if they are relatively common. Please note that such issues of descriptiveness
will still be applicable. For example the registration of the surname “BROWN” as a trade mark in the category for food
sauces therefore would not be allowed.


Charlie Inman - application of law



Surname


A search undertaken at the British Surnames website only gives 2,486 results for “Inman” in the UK. Therefore there was no issue in this case.


Forenames


On its own “Charlie” will have issues with cups or items of fashion jewellery as the general consumer may judge such indications to be simply decorative. In other words you may buy the "Charlie" cup to give away as a present to a person named "Charlie" and buy it for this reason.


It is probable that single forenames will also have difficulty in service industry businesses such as restaurant services, tea shops, hairdressers and beauty salons. However the Registrar of Trademarks still must show evidence that the
trade mark lacks the distinctiveness required amongst consumers.


Forenames Together with Surnames


Forenames and surnames together are treated in the same way as surnames alone. In addition they will be even more likely to have the distinctive character and therefore be acceptable as a trade mark.


Conclusion


It therefore very likely that “charlieinman” can succeed at the examination stage for a trademark application the entertainment category for Films and TV Shows (UK Registrar - Trademark Search came back clear).


Brand Certain - UK trademark




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Tags: Cases, EU, Names, Search, Trademark, Trademarks, UK

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Comment by Mikk Putk on April 6, 2010 at 3:56am
Any comments, how are the jurisdictions in other countries?

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