The right to register personal names as trade marks in Finland

20 March 2011

Ella Mikkola, Topi Lusenius

Are persons entitled to register their names as trade marks where the names have been rightfully included in earlier marks? There is some national case law on the matter, and the CJEU’s decision in Barbara Becker v Harman International Industries (issued on 24 June 2010) sheds additional light on this question.

In Finland, most cases regarding conflicts between a person’s name and a trade mark are about person’s right to prohibit the use of one’s own name in a trade mark. As a rule, “the name of another” may not be included in a trade mark, and “something likely to give the impression of being the surname of another” may not be included in a trade name (company name). These cases include, inter alia, KKO 1997:150 where the Finnish Supreme Court rejected the trade name “Homer’s Bar” since Homer is a person’s surname in Finland, and a more recent decision KHO 3362, where the Finnish Supreme Administrative Court stated that the trade mark “Kauranen” (one descriptive translation could be “Little oat”) could be used for goods including oat as in such situation the relevant public would not associate it with the identical and relatively common Finnish surname.

The ruling of the CJEU in the Barbara Becker case, however, is about the other side of the coin: may a trade mark holder prevent a person from registering that person’s name as a trade mark?

OHIM’s traditional approach has favoured the holders of earlier marks. In earlier EU case law it has been concluded that consumers attribute greater distinctiveness to the surname than the forename in a trade mark. This approach has enabled OHIM to state that a surname in a trade mark likely forms the dominant part of such mark, and thus provides effective protection against later trade marks which include the same surname. The somewhat criticised outcome of this has been that it is difficult for a person to secure a trade mark registration for that person’s own name.

According to the Finnish Trade Marks Act, a person may use his/her surname as a trade symbol, unless “that causes confusion with another’s protected mark”. This provision is somewhat outdated and needs to be interpreted in accordance with Article 6.1 (a) of the Trade Marks Directive and CJEU’s case law (notably C-17/06 Céline), which limit the trade mark holder’s prohibition rights. However, the Finnish Trade Marks Act remains silent as regards a person’s right to register his/her name as a trade mark.

In practice the approach in Finland has traditionally been somewhat in favour of each person’s freedom to register his or her own name. For example, in KKO 1990:41 the Supreme Court concluded that the trade name (i.e. not a trade mark) Leena Rein & Pirjo Lahtela Oy (consisting of the first names and surnames of two persons) was not confusingly similar to Papula Rein Lahtela Oy (consisting of three surnames), irrespective of the somewhat ironic fact that both companies were operating within the field of industrial property consulting. The Supreme Court based its ruling (issued twenty years ago and four years prior to Finland joining the EU) by briefly stating that, in overall assessment, no likelihood of confusion within the relevant public was likely.

One can, however, note the Helsinki Court of Appeals ruling in Oy Gustav Paulig Ab v Robert Paulig (30 June 2009), where the Court of Appeals concluded (in line with the CJEU’s L'Oréal v Bellure, without explicitly referring thereto) that since the earlier mark Paulig had a reputation, likelihood of association was sufficient to require the trade mark use of family member Robert Paulig’s own name to be prohibited. It is interesting to note that the Court acknowledged that Article 6.1 (a) of the Trade Marks Directive allows one (always) to use ones own name in the course of trade provided the person uses it in accordance with honest practices, and the Finnish Act needs to be interpreted in accordance with the Directive albeit the Finnish Trade marks Act does not include such a provision. In addition, the Court seemed to suggest that due to the likelihood of association, the mark Robert Paulig was not used in accordance with honest practices. The decision is final since no right to appeal has been granted by the Supreme Court.

The CJEU shed some additional light on these questions in its ruling in Barbara Becker v Harman International Industries. The case is about whether Barbara Becker, the ex-wife of the tennis legend Boris Becker, has a right to register her name “Barbara Becker” as a trade mark despite the defendant’s earlier mark Becker covering similar goods. The defendant, Harman International Industries, is a global provider of audio solutions.

In its ruling the CJEU emphasised that all factors of the case must be taken into account, in particular the overall impressions of the marks, their distinctive and dominant components and the perception of the marks by the average consumer. It is also stated that although in some parts of the EU surnames might be perceived more distinctively than first names, account must be taken of all factors of the case and, in particular, if the surname was unusual or, on the contrary, common. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Account must also be taken if the person who applies for the registration of the name as a trade mark has a celebrity status since that may influence the perception of the mark by the relevant public.

It seems that CJEU’s ruling in Barbara Becker v Harman International Industries does not materially amend the legal situation in Finland regarding the registration of a person’s own name as a trade mark: one’s right to register the name as a trade mark is subject to a general assessment of likelihood of confusion, and account must be given to all facts relevant to the case. However, in its Becker judgment the CJEU has not addressed the matter whether a conflict may exist with regard to the right to use one’s own name in the course of business, or more precisely, when such use is contrary to honest practices.

The issue regarding persons’ names is topical in Finland since there are discussions to amend the Finnish Trade Marks Act to be more in line with the Trade Marks Directive and the case law established by the CJEU.  The Ministry of Employment and the Economy in Finland recently commissioned a report on the necessary amendments. The report “Selvitys tavaramerkkilain muutostarpeista” (available in Finnish only), drafted by researcher Katja Weckstrom, was published in February 2011; and included a section on persons’ rights to use their own names.

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