Surnames as trade marks

United Kingdom
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 for nappies).

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 registration.

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 stephen.whybrow@cms-cmck.com or on +44(0)20 7367 2175, or Lucy Kilshaw at lucy.kilshaw@cms-cmck.com or +44 (0)20 7367 2044.