Personal names as trade marks in the light of Barbara Becker v Harman International Industries, Inc., OHIM

29 June 2011

Svenja Wachtel

In Germany personal names are protected under § 12 BGB (Bürgerliches Gesetzbuch – Civil Law Code). Personal names can also be protected and registered as a trade mark according to § 3 MarkenG (Markengesetz – Trade Mark Act). This can be only a part of a personal name, like the first name or the surname, or the full name. Both possibilities are capable of constituting a mark. There is no requirement in Germany that the registrant is entitled to use the specific name, in order to register it. The registration can be refused by the DPMA (German Patent and Trademark Office) on the basis of the general grounds of refusal, e.g. if there is a likelihood of confusion between this name and another registered trade mark.

With reference to “Barbara Becker” the Court of Justice of the EU (CJEU) had to decide if registration of the word mark “Barbara Becker” should be refused because of its identity with or similarity to the earlier trade mark “Becker” and the identity or similarity of the goods or services covered by the trade marks resulting in a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

On the basis of the Umberto-Rosso decision (BGH GRUR 1961, 628) of 1961 of the Higher Court of Justice (BGH) it was assumed, a likelihood of confusion arises between trade marks based on a surname as well as trade marks including the first name too. The Court held that a first name lacks distinctiveness where the other trade mark is only the surname. Furthermore the average consumer might think that the one who owns the surname is the same one who has a registration for a full personal name.

The legal situation changed in 1998 (BGH I ZB 28/96) with the trade mark “PATRIC LION”. The Court held that the sign “PATRIC LION” had a distinctive character precisely because of the first name. The prevailing case law in Germany assumes, that it is only in exceptional cases that the surname will lead to a likelihood of confusion when compared to a trade mark consisting of the first name and surname. (BGH MarkenR 2000, 364 – Carl Link and BGH MarkenR 2000, 232 – MEY/Ella May). The name has a distinctive character not only because of the surname but also because of the first name. The deciding factor is the overall impression. The BGH decided that there was no evidence that the average consumer would focus his attention only on the surname and that he would not notice the first name as much as the surname.

In the Becker – Harman case, Barbara Becker, the ex-wife of the former German tennis player Boris Becker, registered “Barbara Becker” as a Community Trademark (CTM) in class 9. Harman International Industries Inc. appealed against the registration on the basis of prior rights of the CTM “Becker” in the same class, arguing that the likelihood of confusion includes the likelihood of association with their earlier trade mark.

Barbara Becker requested the CJEU to set aside the judgment of the Court of First Instance of the European Communities (Case T-212/07), which had annulled the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 7 March 2007 (Case R 502/2006-1), which had in turn annulled the Opposition Division’s decision upholding the opposition brought by Harman International Industries Inc. against registration of the CTM for “Barbara Becker.”

The CJEU noted in its judgment of 24.06.2010 (Case C-51/09 P) that the EU General Court had applied the case law in too rigid a manner and without considering the specific facts of that case, such as the fact that Becker is a very common name in Germany and the well-known status of Barbara Becker in Germany. The EU General Court believed that the average consumer generally attributed greater distinctiveness to the surname than to the first name, so the name Becker was likely to have a stronger distinctive character than the first name Barbara. Furthermore the surname is commonly used to describe a person and it would retain an independent distinctive role in that mark.

The CJEU set aside the decision and referred the case back to the EU General Court for reconsideration. The CJEU said that to follow the approach of the EU General Court would mean that any earlier mark consisting of a surname could automatically be relied on to oppose any later mark consisting of that name combined with a forename, without a proper global assessment of similarity. Also, the fact that the first name and surname together are a well known trade mark can influence the perception of the mark by the average consumer.

The decision of the EU General Court will be based on the question of whether the average consumer will make a link between the two different trade marks and whether there exists a likelihood of confusion. Furthermore the well-known or celebrity status in the EU member states of the person who wants to register his personal name as a trade mark has to be considered, as well as the question of whether the name is unusual or common.

The new decision of the EU General Court will either confirm the current legal situation in Germany or will set different standards to decide if a personal name can be registered or which requirements has to be considered.