Changes to examination practice likely following NICHOLS ruling

In Nichols plc v Registrar of Trademarks, the European Court of Justice (ECJ) has ruled that surnames should be examined according to the same criteria as other types of trademarks. It is likely that the decision will necessitate changes to the way in which the UK Trademarks Registry examines such marks since under its current practice it can refuse registration to common surnames.

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.

In the case at hand, Nichols plc applied to register NICHOLS for various goods. The Trademarks Registry allowed registration for vending machines but refused the application in respect of food and beverages. It stated that Nichols is a common name, and the food and drink industry has a large number of participants. Nichols appealed to the High Court.

The High Court referred questions to the ECJ. In particular, the High Court wanted to know "in what circumstances, if any, must a trademark consisting of a single surname be refused registration as being in itself devoid of any distinctive character" and "may such a sign, before it has acquired distinctive character by use, be refused registration"? It also queried whether the 'own name' defence, which permits a trader to use his/her own name honestly without risk of infringement, could be a relevant consideration.

The ECJ confirmed that counting rules (such as those applied by the UK Trademarks Registry), which create an assumption that surname marks are devoid of distinctive character, cannot be applied. The distinctive character of a surname must be assessed in the same way as any other mark. It also stated that a surname cannot be refused in order to ensure that no advantage is afforded to the first applicant since the Community Trademark Directive contains no provision to that effect. In addition, the ECJ indicated that the 'own name' defence should not be taken into account when assessing the distinctive character of a surname mark. As with every other mark, the examiner must divine the perception of the relevant public for the goods or services in issue in a case-specific way.

Following this decision, UK examination practice, which is at present defined by Practice Amendment Circular 6/00, will have to evolve to some extent. It is likely that examiners will no longer be able to reject a surname mark simply on the grounds that it is a common name. They will at the very least have to explain why this makes the surname devoid of distinctive character.

For a background discussion of this case, see Change to examination procedure for surnames signalled.

Barbara E Cookson, Nabarro Nathanson, London