NICHOLS sees changes to UK examination practice

United Kingdom

Following the European Court of Justice's (ECJ) decision in Nichols plc v Registrar of Trademarks, the UK Trademarks Registry has released a new Practice Amendment Notice 1/05 relating to the examination of marks comprising surnames, forenames or full names.

The registry stresses that it will abandon the use of factors that could be said to be "general criteria", such as the prevalence of the surname in question in the London telephone directory. It will instead rely upon information about the extent of use of a particular surname in a specific sector of the market.

The registry emphasizes that it will not generally have this information and it will be open to third parties to supplement the registrar's knowledge of the market through the filing of written observations or opposition proceedings. Exceptionally, the registrar may take judicial notice of facts that are generally known. The registry states that the mere existence of one or two unconnected undertakings with the same name in the same market will not automatically justify an objection that the mark is devoid of distinctive character. However, such an objection may be raised if the evidence shows that the relevant public would not have had any expectation that the relevant goods or services under that name would originate from a particular undertaking.

Additionally, an objection may be raised where the surname has another meaning. For example, the trademark BROWN may be deemed devoid of distinctive character and descriptive in relation to sauces or paints. The same applies to single forenames, but objection is only likely to occur where there is evidence of the position in the relevant market.

For a discussion of the ECJ's decision in NICHOLS, see Changes to examination practice likely following NICHOLS ruling.

Chris McLeod, Hammonds, London

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