The High Court has recently referred to the European Court of
Justice (“the ECJ) an important case concerning the
registrability of surnames as trade marks and the way in which the
issue of distinctiveness should be assessed by registries. Traders
using unregistered surnames as trade marks should consider early
application for registration.
Nichols plc made trade mark applications in the UK
for the word NICHOLS for food and drink products. The Registry
refused the applications as there was no evidence that the marks
had acquired distinctiveness through use. The Registry applied the
guidelines set out in Practice Amendment Circular 6/00 under which
it considers the commonness of the name by reference to telephone
directories, (the appearance of 200 names in the London directory
indicating that the name is common) and the number of businesses
likely to be engaged in the relevant trade. The more common the
name and the less specialised the trade, the less willing the
Registry is to accept applications for surnames without evidence of
distinctiveness. Nichols plc appealed.
Mr Justice Jacob decided to refer the case to the
ECJ to establish whether registration of a common surname as a
trade mark should be granted on a “first come first served
basis or whether other considerations should be taken into account.
Also, there was the related question as to whether a common surname
could be regarded as devoid of distinctive character. These
questions would need to be considered in the context of the well
known BABY-DRY case (in which it was somewhat controversially
decided by the ECJ that BABY-DRY was registrable as a trade mark
Mr Justice Jacob made some interesting comments on
the approach taken by the ECJ in the BABY-DRY case. The ECJ had
found it relevant to take into account the potential defences to
infringement in deciding whether the mark was registrable.
Traditionally this had not been the approach taken, at least in the
UK; rather the approach had been to assess marks on their own
merits, it being considered unfair to expose traders to claims of
infringement, even if they may have a defence. Jacob J remarked
that “by granting registration of a semi-descriptive, or
nearly-but-not-quite-completely descriptive mark one is placing a
powerful weapon in powerful hands and that in the practical world
“powerful traders will naturally assert their rights even in
marginal cases. He remarked that the BABY-DRY case seemed to have
“shifted the balance towards trade mark owners who have the
resources and foresight to use the registration system and against
the public in general and weaker and less organised companies.
Also, if defences are to be considered in assessing
registrability, the “own name defence may need to be
clarified, in particular, the question as to whether it applies to
companies as well as to individuals. This issue was referred to the
ECJ by the House of Lords in the Scandecor case some time
ago, but the action settled before an ECJ judgment was given.
The NICHOLS case, once decided, is likely to prove
of some significance. In the meantime, brand owners using arguably
common surnames which are not registered would be well advised to
apply for registration, even in marginal cases. It would not be
surprising if, notwithstanding Mr Justice Jacob’s comments,
the ECJ favoured the “first come first served view of
Case reference: Re Nichols plc, High
Court, 23 July 2002. Please let us know if you would like a copy of
the full judgment.
For further information, please contact Stephen
Whybrow at email@example.com
or on +44(0)20 7367 2175, or Lucy Kilshaw at firstname.lastname@example.org
or +44 (0)20 7367 2044.