UK Patent Office Implements ECJ Ruling On Surnames As Trademarks

by Robin Pilgrim, LawAndTax-News.com, London

23 February 2005

The UK Patent Office earlier this month announced that it had amended its practices on the registration of surnames, full names and forenames as trademarks.

Previously, the Patent Office's rules stated that if a surname appeared more than 200 times in a London telephone directory, it would not be accepted for registration as a trademark.

However, a ruling delivered by the European Court of Justice in September 2003, stated that:

"In the same way as a term used in everyday language, a common surname may serve the trademark function of indicating origin and therefore distinguish the products or services concerned."

Responding to this in new guidelines published on February 11, the UK Patent Office announced that:

"Given the ECJ's rejection of the general application of the factors which the court characterised as “general criteria”, the Registrar will not raise objections to the registration of marks consisting of common surnames on the basis of these factors alone."

It went on to add that:

"The Registrar will not generally have specific information about the extent of the use of a particular surname in a specific sector of the market. Exceptionally, the Registrar may take judicial notice of facts which are generally known, which could include the extent of the use of a particular surname in a specific field."

"For example, the Registrar may not need evidence in order to notice that there are a large number of doctors in practice in the UK with the name ‘Smith’. He may properly conclude from this finding that consumers or end users of medical services will not regard that name, by itself, as distinguishing the medical services of one undertaking from those of other such undertakings. In these circumstances it will, of course, be open to the applicant to challenge any of the facts upon which the Registrar relies to support a resulting objection under Section 3(1)(b) of the Act."

Recommended