Court provides guidance on protection of artistic names in ‘Brothers of Hard Rock' case

Under the Swedish Trademark Act (2010:1877), exclusive rights to trademark protection are gained either through registration or incorporation. The Trademark Act of 2010 introduced a prohibition to register trademarks that include another person’s characteristic surname, or generally known artistic name, or a similar name.

The Swedish Court of Patent Appeal recently issued three decisions which all involved surnames and artistic names. The three decisions provide further guidance concerning the ground for refusal under Chapter 2, Article 10(2) of the Trademark Act, which states:

“A trademark shall not be registered… if it contains or consists of an element which is liable to be conceived as another person’s characteristic surname, generally known artistic name or similar name, if the use of the trademark would be to the disadvantage of the bearer of the name, and if the name obviously does not relate to a person who is long deceased.”

The three decisions sharpen to a certain extent the application of Article 10(2). Analogies were made with the Swedish Name Act (1982:670) to specify the definition of 'artistic names' and 'characteristic surnames'.

The latest decision, issued by the Court of Patent Appeals on February 6 2014, concerned the registration of the trademark BRÖDERNA HÅRDROCK ('The Brothers of Hard Rock') (Case No 13-111). The film company Bob Film sought to register the trademark in conjunction with a film production - a comedy about two brothers, fans of the hard rock music genre. The only problem was that two real-life 'hard rock brothers' already existed. They alleged that they owned the (unregistered) trademark BRÖDERNA HÅRDROCK and that the film was based on their common story. The brothers had been featured in a documentary produced by SVT - the Swedish public service television company - under the title "Bröderna hårdrock" in 1998. The two brothers claimed that the documentary had made their shared name famous and that they had acquired exclusive rights to the trademark.

The court did not agree with the brothers and, referring to the Name Act, held that protection of an artist's name is meant to protect only a single designated person. BRÖDERNA HÅRDROCK referred to two people and, therefore, the registration of the trademark could not be refused. The court also pointed out that all names and euphemisms are not supposed to be protected.

To refuse a registration, the characteristics of the mark must be perceived as someone else's generally known artistic name, and use of the mark must be to the disadvantage of the bearer of the name. Interestingly, if the film company had sought to register only one of the brothers’ names, such name might have been considered worthy of protection, given that their artistic name was generally well known.

The consequence of the court's interpretation is that groups of artists who want to operate under a common name must register that name as a trademark; however, artists can get automatic protection for their own name as long as they are generally known. One might question whether the Trademark Act and the Name Act really correlate that well and whether analogies are to be made as liberally as the court did in this case.

Tom Kronhöffer and Sara Elmqvist, von lode advokat ab, Stockholm