Trade marks comprising a common surname

In its above-mentioned judgement, the European Court of Justice (the “ECJ”) deals with the question whether a surname, which is very common within certain market, is capable of being registered as a trade mark, or whether it must be considered as being devoid of distinctive character and, therefore, not capable of being registered as a trade mark according to Article 3(1)(b) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (the “Directive”).

The Registrar of Trade Marks of the United Kingdom (the “Registrar”) granted the application of the company Nichols plc for registration of the surname “Nichols” as a trade mark in respect of vending machines, while it refused the application in respect of food and drink of the kind typically dispersed through such vending machines. The Registrar supported its decision with the argument that the name Nichols is very common in England and, therefore, is devoid of any distinctive character in respect of food and drink products. However, given the fact that the market for vending machines is more specialised and fewer people are included in it, the trade mark may be registered in respect of vending machines.

Following the appeal of Nichols plc against the decision of the Registrar to the High Court of Justice of England and Wales, the latter referred to the ECJ for a preliminary ruling concerning the interpretation of Article 3(1)(b) and Article 6(1)(a) of the Directive.

The ECJ finds out that Article 2 of the Directive contains a list of examples of signs which may constitute a trade mark, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings; such list expressly includes “personal names”. The Directive further provides that the distinctive character of a mark must be assessed in relation to the goods or services in respect of which registration is applied for and in relation to the perception of the relevant consumers. It may prove to be more difficult for a certain signs/trade marks to establish a distinctive character for certain categories of public than for others. However, the criteria for assessment of the distinctive character of trademarks constituted by a personal name must be the same as those applicable to the other categories of trade marks. Stricter criteria of assessment based, e.g., on a predetermined number of persons with the same name, or the number of undertakings providing products or services of the certain type cannot be applied to such trade marks. It cannot be assumed that a trade mark formed of a common surname is a priori devoid of distinctive character or cannot acquire such character through use.

In the same way as a term used in everyday language, a common surname may serve the trade mark function of indicating origin and distinguish the products or services where it is not a subject to a ground of refusal of registration other than the one referred to in Article 3(1)(b) of the Directive.

The fact that Article 6(1)(a) of the Directive enables third parties to use their name in the course of trade, even if it is identical with the trade mark registered in favour of another person, has no impact on the assessment of the distinctiveness of the trade mark, which is carried out under Article 3(1)(b) of the Directive.