A recent opinion of Advocate General Ruiz-Jarabo Colomer has given an indication of the way that national trade mark registries in the European Union will have to deal with applications to register common surnames as trade marks. In August 2000 Nichols Plc applied to register the word mark “Nichols” in classes 29, 30 and 32 under the Nice Classification of goods and services in respect of vending machines and products sold by means of vending machines such as foodstuffs and drinks. In May 2001 the United Kingdom Trade Marks Registry granted the trade mark applications in respect of the vending machines but declined to grant them in respect of registrations for the remaining indications.

In reaching it decision the UK Trade Marks Registry stated that it had decided to reject the rest of the application on the basis that: (i) “Nichols”, together with phonetically similar names, such as Nicholls, or Nichol, are common names in the UK since they appear 483 times in the London telephone directory; (ii) the applicants operate in the food and drinks market and this is made up from a large number of operators and it would be difficult for consumers to identify the commercial origin or the products from a common surname. In contrast with the application for “Nichols” for vending machines, this market was more specialised and there were fewer undertakings in this area making it more likely that people would be able to tell where goods and services supplied under that registered trade mark came from. Nichols Plc appealed to the High Court of Justice in the UK, which on hearing evidence on the practice of the UK Trade Marks Registry in relation to common surnames, referred a total of five questions to the European Court of Justice (ECJ) relating to the “distinctiveness” of common surnames. In his opinion the Advocate General answered four of these questions (the answer to the fifth was deemed unnecessary) and his answers provide an interesting insight into the way that common surnames, such as Nichols, may be treated in future.

One of the requirements for a trade mark to achieve registration is that it must possess distinctive character (Article 3 (1)(b) of First Council Directive 89/104/EEC, the “Directive”). This is commonly taken to mean that the potential trade mark must be capable of demonstrating that it is capable of distinguishing the goods or services of one undertaking from those of another undertaking. When it came to the issue of common surnames the UK Trade Marks Registry had issued a practice statement in which it stated that it would assess Section 3(1)(b) of the Trade Marks Act 1994 (the UK’s enactment of Article 3(1)(b) of the Directive) by taking into consideration; (i) the commonness of the surname and; (ii) the number of undertakings (including manufacturers, designers, and specialist retailers) engaged in the trade from whom the goods could be said to originate. With respect to assessing the commonness of the surname the UK Trade Marks Registry also used the London telephone directory (or any other relevant UK telephone directory) to see if the name appeared more than 200 times. If a surname did not appear more than 200 times it was not regarded as common. The policy reason behind the Registry’s practice is that the registration of names should only be allowed where there is a small market and it is more likely that that the average consumer will perceive the surname as a trade mark.

The essence of first three questions that were referred to the ECJ from the High Court in the UK was whether this method of assessing the distinctive character of a common surname was out of step with previous guidance from the ECJ on the assessment of distinctive character. In his assessment the Advocate General noted that Article 2 of the Directive states, prima facie, that personal names are capable of being trade marks, and that as a matter of fact surnames, and common names, are trade marks that operators frequently resort to. They are also not specifically prohibited under Article 3(1)(c) (the ground of registration that specifically prohibits registration of marks that are “generic” or that should be available to all). Further, one of the defences to infringement of a registered trade mark is to state that you are using your own name or address which meant that the legislator must have contemplated the registration of names.

The Advocate General came to the view that the Directive made no distinction between the different categories of trade marks that could be registered. In assessing the distinctive character of a trade mark under Article 3(1)(b) regard must be had to the view point of the average consumer of such types of goods and services who is presumed to be reasonably well informed and reasonably observant and circumspect. Under ECJ jurisprudence for a trade mark to fulfil its principle task it is sufficient if it enables the public to distinguish the product or the service which it designates from others which have another commercial origin, and to conclude that is was manufactured or marketed under the control of the trade mark owner who accepts responsibility for its quality.

The approach adopted by the UK Trade Marks Registry was not consistent with this approach. The Advocate General did not comment on the suggestion advanced by some of the parties that the approach of assessing distinctive character adopted by the UK Trade Marks registry was arbitrary. He did say that in its assessment of distinctive character, whilst it is possible to take the commonness of a surname into account, in order to reach a decision on this objection the Registry must make a specific finding that there is no capacity to distinguish rather than making an all embracing or abstract finding that a trade mark failed to meet this criteria. As a caveat he did note that there was nothing to prevent national registries from preventing registration where the mark did not display a capacity to distinguish.

The other point of note that arose from the Advocate General’s opinion was the importance of the defence under Article 6(1) (use of an own name or address) in considering any objection under Article 3(1)(b). Specifically in this instance, the question went to the issue of to what extent is it important that the effect of a trade mark for a name is limited by the defence of whether that application for registration is in fact distinctive? The Advocate General took the view that the availability of the defence was not a factor in the decision as to whether to grant a trade mark in the first place. There was nothing in the Directive that suggested the approach to the registration of a common surname was to be treated differently because there was a specific legislative defence that permitted the use of an own name or address.

The scheme of the Directive was such that there were a number of stringent grounds that a potential trade mark had to overcome before it was able to be registered. This procedure was open to appeal and was therefore intended to be more than summary in nature. To permit the registration of a trade mark because there was a defence would run the risk of permitting an approach that was inconsistent with the Directive itself which required analysis prior to registration. It would also place registered trade mark owners at an advantage given the lead they had once they had achieved registration.

The Advocate General took a very firm line in this opinion. It is very clear that common surnames are to be judged no differently than any other potential trade mark when it comes to assessing their ability to distinguish themselves as a trade mark. He was also very clear that the availability of a specific defence did not affect the assessment that the national registry had to make in assessing distinctive character. The matter will now await the ECJ’s ruling.

Due to be published in the February 2004 issue of WIPR.

Important - The information in this article is provided subject to the disclaimer. The law may have changed since first publication and the reader is cautioned accordingly.