EU Surname Registrability Clarified

On September 16, 2004, the European Court of Justice ruled in Nichols plc v Registrar of Trade Marks, that the registrability of surnames must be considered under the same criteria as any other trade marks.

"The potential distinctiveness of a surname depends on whether, in relation to the goods or services in respect of which registration is sought, the relevant consumer considers that the sign identifies those of one undertaking rather than those of another," wrote the court. The commonness of the surname is one of the factors which it is appropriate to take into consideration."

Alexander von Mühlendahl, vice-president of EU's Office for the Harmonization of the Internatl Market, told MIP Week that "Following this decision, OHIM will not have to change its practice and will continue to accept surnames as trade marks, and will also not change its practice in oppositions when the earlier trade mark consists of a surname."

In contrast, under U.S. trademark law, exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a mark for particular goods or services. The Trademark Trial and Appeal Board has therefore identified five factors to be considered in considering whether a term is "primarily merely a surname" and therefore relegated to the Supplemental Register:

(1) whether the surname is rare;

(2) whether the term is the surname of anyone connected with the applicant;

(3) whether the term has any recognized meaning other than as a surname;

(4) whether it has the "look and feel" of a surname; and

(5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.

Similar to Europe, U.S. telephone directory listings are relevant to the surname deteremination, as are excerpted articles from computerized research databases, evidence in the record that the term is a surname; the manner of use on specimens, and dictionary definitions of the term and evidence from dictionaries showing no definition of the term.