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Tuesday, 14 October 2003

COMMON FRENCH NAMES REGISTRABLE AS UK TRADE MARKS

The Trade Marks Act 1994 has been in force in the United Kingdom since 30 October 1994. The occasional item of litigation under the old law, the Trade Marks Act 1938, still crops up. EI du Pont de Nemours & Co v ST Dupont is a case in point. US fabrics manufacturer EI du Pont de Nemours applied to register DU PONT in class 25 (clothing); French company Dupont opposed on the basis that the mark was not, and could not be, distinctive; Dupont later sought to amend the opposition by pleading that DU PONT was also a common French surname. A further ground of opposition was that use of the DU PONT trade mark would be deceptive since Dupont had used it for a long time. Before the Registry the Hearing Officer dismissed the opposition and refused to allow the amendment. On appeal Neuberger J allowed both the amendment. In parallel proceedings between the two parties Dupont applied to register the single word DUPONT, also for clothing in class 25. Reversing the decision of the Hearing Officer, Neuberger J rejected EI du Pont de Nemours’ opposition.

The Court of Appeal restored the Hearing Officer’s decision for a variety of reasons, largely evidential. In particular it held that Neuberger J should not have taken notice of the fact that Du Pont was a common French surname which was listed more than 800 times in the Paris telephone directory: the fact that a surname was common in Paris was irrelevant to the question whether it could serve as a surname in the United Kingdom. Also, given the extent of EI du Pont de Nemours’ use of the DU PONT trade mark in relation to fabrics, it could not be said that its use of the same mark in relation to clothing would be deceptive.

The IPKat applauds the Court of Appeal’s reasoning on the frequency of French names and notes that the current criteria for absolute bars to registration as a trade mark under the Trade Marks Act 1994 do not expressly include the fact that a trade mark is also a common surname. When the ECJ’s ruling on the registration of surnames comes out in Nicholls’ case , we will all be the wiser for it.

More on French surnames here, here and here
Lyrics to Monsieur Dupont here


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