Many businesses in Australia, and around the world, use a person’s surname in their branding or trading name; some are named after their founders, while many surnames such as Lock or Green are also common nouns that can form part of an unrelated business name.
However, when an applicant seeks to register a trade mark to protect a business name or brand prominently containing a surname, they very often face an objection from the Australian Trade Marks Office on the basis that other traders with that name are likely to want to use it in connection with their own goods and services. This is covered by section 41(4) of the Trade Marks Act 1995.
A recent decision from the Australian Trade Marks Office however gives cause for optimism that one approach, in the right circumstances, may be successful in overcoming these objections going forward.
This type of objection is common in Australia and as such the Australian Trade Marks Office examination manual provides instructions specifically regarding the examination of trade marks which are comprised of a common surname:
A list of all surnames which occur on the electoral rolls of the Australian states is available for on-line searching by Trade Marks Office staff. … The Search for Australian Surnames (the SFAS) value gives a measure of the commonness of the surname and therefore of the likelihood that a trader with that name would wish to use the name in connection with his or her goods or services. The more common the surname, the less inherent adaptation to distinguish it will have. As a general rule, an SFAS value of 750 or more will tend to indicate that the surname is sufficiently common to warrant raising a ground for rejection. However, the nature of the goods and/or services must be taken into account, that is whether they are specialised, commonplace or somewhere between these extremes.
For example, if the SFAS value is well over 750, but the goods are cyclotrons or railway coaches, the likelihood that other persons will need to use the name on those goods is low enough for the trade mark to be considered prima facie capable of distinguishing. On the other hand, if the trade mark is to be applied to easily produced and commonplace goods such as clothing or cakes, there is a much greater likelihood that another person would wish to use the same surname on their similar goods and a ground for rejection would be appropriate.
However, despite the above comments regarding the different consideration to be given to cases of narrow and specific goods or services, in recent practice this type of objection has always been raised by the Trade Marks Office if the trade mark contains a word which is also a surname and has an SFAS value of 750 or more.
The Trade Marks Office has often rejected arguments put by applicants in response to these types of objections relating to this guidance, and refused to accept applications even if the goods or services are narrow and specific.
On 27 September 2016, IP Australia Hearing Officer Katrina Brown issued her decision on Vectura GmbH  ATMO 77. This matter related to a trade mark application for the word FOX, in classes 5 and 10, in the name of Vectura GmbH.
After the application was filed, it was examined by the Australian Trade Marks Office. The Examiner raised an inherent distinctiveness objection pursuant to section 41(4) of the Trade Marks Act 1995 (‘the Act’), as described above. Specifically, the examination report stated:
Your [application] is refused because your trade mark is not capable of distinguishing the specified goods. This is because your trade mark is FOX. This word is also the surname of many Australians.
People will often provide goods and/or services using their surname. The more common a surname is, the more likely it is that other traders may wish to use it.
Other traders with this surname should be able to use it in connection with goods or services similar to yours.
In the present case, the surname FOX has an SFAS value of 7259, which is significantly higher than the 750 SFAS level set by the Trade Marks Office. The applicant disagreed and eventually the matter went to a hearing.
In the decision, the Hearing Officer stated that a decision to reject a trade mark should not be based solely on the fact that the mark is comprised of a surname which appears an arbitrary number of times among the Australian adult population.
To support her statement, the Hearing Officer referred to Wilcox J in Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd where is His Honour made the following comments with regard to SFAS results at a time when similar office guidelines referred to a limit of 400 Australian surnames:
I gather from Mr Homann’s reasons there is a policy document issued by the Registrar of Trade Marks that decrees a mark, to be registrable, should not comprise or include a name that occurs more than 400 times in the Australian Electoral Register. The policy document is not before the Court, so I do not know what rationale it advances for this dictat. Why 400? The answer does not matter. The policy has no foundation in the Act; so it is devoid of any legal justification. It is not for the Registrar to impose non-statutory restrictions on the words that may be registered as trade marks.
The Hearing Officer then went on to say that consideration as to whether a trade mark containing or consisting of a surname is capable of distinguishing is multifaceted and the SFAS value is only one of the points that should be considered. The Applicant submitted that the word ‘fox’ has multiple meanings other than that of a surname, including:
- any of the various wild flesh-eating mammals of the dog family;
- the fur of said mammal/s;
- a cunning or sly person;
- to act craftily; and
- to deceive, baffle or trick.
The Hearing Officer agreed with the Applicant’s submissions on the above and stated that alternate meanings of the word/s; the nature of the designated goods or services; and whether it is common for traders in those goods or services to use their surname as a trade mark, should be taken into account when examining trade marks comprised of a common surname.
The goods that the Applicant was designating were as follows:
Class 5: Pharmaceutical preparations formulated for pulmonary delivery via inhalation; pharmaceutical preparations for the prevention or treatment of diseases or conditions of the respiratory and cardiovascular systems: none of the aforementioned goods including medicated confectionery.
Class 10: Drug delivery devices; inhalers; metered dose inhalers; active dry powder inhalers; nebulisers for respiration therapy; respirators for artificial respiration; parts and fittings for all the aforesaid goods.
Clearly, the above goods are very specific, would be prepared by highly qualified professionals via complex manufacturing processes, and only prescribed to the general public through similarly highly qualified medical professionals. The Hearing Officer also noted that:
… the goods for which protection is sought are highly regulated. The Therapeutic Goods Act 1989 (‘TGA Act’) governs the manufacture of therapeutic goods in Australia and imposes licensing requirements, periodic reviews and inspections and penalties for non-compliance. These are significant barriers to traders entering the relevant market and as such the market is relatively narrow.
With regard to the above, the Hearing Officer decided that although the word ‘fox’ has an SFAS value of 7259, the word has several meanings and the Applicant has specified a narrow range of goods that are highly regulated. The Hearing Officer stated that the mark is inherently adapted to distinguish the goods for which protection was sought.
This decision gives cause for optimism that applicants with objections based on their employment of fairly common surnames may be able to, in the right circumstances and with the right approach, overcome such inherent distinctiveness objections more readily than previously.
It suggests that where circumstances allow, a strategy which limits the range of goods and services sought, demonstrates the rarity of using surnames to distinguish those types of goods and services, and emphasises any alternative significances of the name itself, has some chance of success without the past need to file significant evidence of use or request a Hearing.