NAMED BUT NOT SHAMED

Yesterday Advocate General Ruiz-Jarabo Colomer delivered his opinion in Nichols , considering the registrability of surnames as trade marks, specifically whether they are capable of distinguishing goods. Nichols plc, a UK company, applied to register NICHOLS to designate automatic vending machines and products sold from those machines. The UK Trade Mark Registry allowed the application with regard to vending machines but refused it for goods and drink sold therein, stating that the sign was a common surname. In doing so, it applied its policy, spelt out in PAC 6/00, that surnames should not be registered as trade marks where: (i) the surname occurs frequently in the London telephone directory and (ii) there are a large number of operators in the market for the goods or service designated. Nichols appealed to the High Court, questioning whether the Registry’s policy on surnames was compatible with Directive 89/104. In consequence, the court referred a number of questions on the subject to the ECJ and the Advocate General suggested that the questions should be answered as follows:

♦ Personal names can act as trade marks. They are capable of meeting the Article 2 capacity to distinguish criteria and are not on the list of excluded marks under Article 3(1)(c). Furthermore, the own name defence (Article 6) and Article 2 (which mentions personal names) both envisage names as being registered as trade marks.
♦ It is not for the ECJ to make value judgments about national legislation. Instead, it is limited to ruling on the compatibility of the legislation with EU rules. Here, while the UK Registry’s approach differed from that favoured by the ECJ, no sufficient reasons were put forward in favour of choosing another method. The distinctiveness of a surname must be analysed in relation to the specific market concerned, and the fact that names are often used as trade marks in a particular sector does not mean that it can be assumed that that is the case for all sectors. Since there is nothing to justify treating surnames differently, any judgment as to their distinctiveness must observe the same guidelines as those applicable to other sorts of word marks. Under this analysis, it is necessary to take into account that in some sectors commons surnames are assiduously used to designate commercial origin and therefore have no capacity to distinguish. However, this will depend on the specific case and no a priori all-embracing or abstract rule on the issue can be made.
♦ There is no “keep free” interest where a surname is excluded from registration under Article 3(1)(b). The purpose of that article is to prevent the registration of signs that have no distinctive character and cannot therefore act as a trade mark. There is no general interest in maintaining such signs that are incapable of identifying the commercial origin of the goods or services which they designate in the public domain.
♦ The fact that the effect of the registration of a surname as a trade mark is limited by the “own-name defence” in Article 6(1)(a) is irrelevant to the assessment of distinctiveness under Article 3(1)(a).

The IPKat says there weren’t really any major surprises in this Opinion. The meaning of Article 3(1)(b) and how it is applied is pretty clear and this was just an application of it. Likewise, the fact that (i) “keep free” is relevant to Article 3(1)(c) and not 3(1)(b) and (ii) the fact that defences shouldn’t be taken into account when considering the scope of registrability is well-travelled ground.

London telephone directory here
Famous Nichols here and here
Find out about surnames here
Unusual surnames here
Laugh at surnames here