ECJ DOESN'T GET ITS NICHOLS IN A TWIST

If you have a common surname like Smith or Jones, can you register it as a trade mark or (i) is it to be regarded as lacking in distinctive character under Article 3(1)(b) of Directive 89/104 or (ii) should your surname be kept off the trade mark register so that other people with the same name can use their name too without threat of trade mark infringement? The European Court of Justice has now given its ruling on these questions in Case C-404/02 Nichols plc v Registrar of Trade Marks.

What the ECJ says is basically that common surnames are to be examined exactly the same way as any other prospective trade marks. In particular:

* Stricter general criteria of assessment based on (i) a predetermined number of persons with the same name, above which that name may be regarded as devoid of distinctive character, (ii) the number of undertakings providing products or services of the type covered by the application for registration or (iii) the prevalence or otherwise of the use of surnames in the relevant trade cannot be applied to such trade marks.

* The registration of a surname as a trade mark cannot be refused in order to ensure that no advantage is afforded to the first applicant who wants to use that name.

* Article 6(1)(a) of Directive 89/104 permits a person to make honest use of his name if it is identical or similar to a registered mark . Honest use cannot therefore be taken into account for the purposes of the assessment of the distinctive character of an applied-for trade mark.

The IPKat thinks this decision is quite correct. The ECJ's decision is consistent with earlier decisions in which it emphasised that three-dimensional product shapes are also to be judged by the same criteria of distinctiveness as any other mark.

Common surnames here, here and here
Uncommon surnames here and here
Descriptive and allusive surnames here