At FRKelly, we often receive inquiries from US clients as to whether surnames can be registered as EUTMs (formerly CTMs). Under US trade mark law, a trade mark that is primarily merely a surname cannot be registered without proof that the mark has acquired distinctiveness through use. US clients are usually relieved to learn that EUTM surname practice is much more permissive than in the US, and that surnames can be registered relatively painlessly under the EUTM regime.
Under the EUIPO (formerly OHIM) guidelines, surnames (no matter how common) are generally considered distinctive. This was confirmed by the European Court of Justice in 2002 in Case C-404/02 Nichols which stated, “The criteria for assessment of the distinctive character of trade marks constituted by a personal name are therefore the same as those applicable to the other categories of trade mark.”
Irish surnames that have been registered as EUTMs include O’BRIENS for sandwiches, JAMESON for whiskey, GUINNESS for stout and BAILEYS for cream liqueurs.
It is important to note that if a surname is registered as an EUTM by the EUIPO, this does not necessarily mean that the proprietor will be completely free from difficulty later on when trying to enforce its trade mark rights. Article 12 of the new EUTM governing regulation provides that, “An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade……the name or address of the third party, where that third party is a natural person” — provided such use is “in accordance with honest practices in industrial or commercial matters.”
Up until the new Regulation was implemented on March 23, 2016, this “own name defence” for EUTMs was applied to business/company names as well as personal names (see ECJ decision of Céline SARL v Céline SA, Case C-17/06). However, under the new Regulation, only natural persons can avail of the defence, i.e., companies can no longer rely on the use of their company or business name as a defence to infringement of an EUTM.
This new restriction will no doubt be welcomed by proprietors of EUTM registrations.