Change to examination procedure for surnames signalled

European Union

In Nichols plc v Registrar of Trademarks, Advocate General Colomer has issued an opinion clarifying the principles relating to the registration of surnames as trademarks. In contrast to the UK Trademarks Registry's current examination practice, Colomer opined that, in principle, surnames should be examined according to the same criteria as other types of trademarks.

The Trademarks Registry follows the practice of refusing applications for surnames where they are sufficiently common to be regarded as non-distinctive. It decides whether the name is common by reference to occurrences of the name in the London telephone directory, and the number of providers of goods and services in the relevant market. Therefore, in an industry where there are relatively few players, such as the airline industry, surnames that would otherwise be regarded as non-distinctive can be registered because the consumer will be able to identify the origin of the goods and/or services within that specialized industry.

In this case, an application for registration of the surname NICHOLS filed by Nichols plc was refused for food and beverages in Classes 29, 30 and 32 of the Nice Classification on the grounds that Nichols is a common name and the industry has a large number of participants. However, the application was accepted for registration in Class 9 for automatic vending machines, which is a much smaller industry. The decision to refuse the application was appealed to the High Court, who referred various questions to the European Court of Justice (ECJ).

In his opinion, Colomer stated that surnames can be registered without any requirement of proof that they have become distinctive through use and that, in principle, they should be examined according to the same criteria as other types of trademarks. In particular, he stated that there is no general interest in keeping common surnames free of monopolies. This contrasts with the general interest in preventing monopolies of descriptive indications or shapes, which is necessary from a technical point of view.

In response to the argument that the method used by the Trademarks Registry to examine surnames is arbitrary, Colomer stated that although the court would not make value judgments on national legislation, in his opinion, the assessment of distinctiveness must involve some degree of subjectivity. He suggested that an analysis of how common a surname is in relation to the particular market is a factor that can be taken into account but it is not decisive.

Colomer concluded that the appropriate test for examining the registrability of a surname is whether, in the opinion of the average consumer of the goods and services in that specific market, the mark can identify the goods and/or services of the applicant from other undertakings.

If this opinion is followed in the forthcoming ECJ judgment on the matter, it will have a considerable effect on not only the UK Trademarks Registry's practice but also on the practice of other registries, including the Irish Patents Office. Although the loss of the objective standard of the current method is likely to disappoint practitioners, the more flexible standard adopted by Colomer will be welcomed by many trademark owners.

Niamh Hall, FR Kelly & Co, Dublin

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