Names can be trademarked even if common

Surnames are registrable as trade marks, the European Court of Justice has ruled in a landmark judgment.

The case concerned a challenge brought by Nichols Plc against a decision of the UK Trade Marks Registry that allowed them to register the trade mark Nichols for vending machines but not for the food and drink typically dispensed through them. The registry’s decision was based on the fact the surname “Nichols”, or derivations of it, appeared at least 200 times in the London telephone directory, therefore the public would be unlikely to think there was only one trader operating under that name.

The European Court ruled that the mere fact that a surname is common does not necessarily mean that it is incapable of distinguishing the goods or services of one trader from those of others. The distinctive character of a trade mark must be the subject of a specific assessment and not based on general criteria, such as numerical guidelines. The criteria for assessment are the same as those applicable to the other categories of trade mark.

Stephen James, president of the Institute of Trade Mark Attorneys, said: “This is an important clarification of the law in respect of applications to register surnames.

“We can probably expect the UK Trade Marks Registry to review its practices in this matter, and not to rely solely on the number of times a surname appears in the telephone directory when considering the distinctiveness of a surname for registration as a trade mark, from now on.

“Each case must be treated on its individual merits and not on arbitrary numerical guidelines.”

“New Law Journal”: 22nd October 2004