• U.K. PRACTICE

    Named and Shamed

    In the United Kingdom, the Patent Office has long relied on the London telephone directory as a means of determining whether a surname is devoid of distinctive character under Section 3 (1) (b) of the Trade Marks Act 1994. A recent opinion of the Advocate-General, however, throws the validity of that practice into doubt, and urges a more circumspect, less rigid approach.

     

    Nichols plc v Registrar of Trade Marks
    Case C-404/02

    Nichols plc applied to register NICHOLS as a trademark in the United Kingdom for food and beverages in Classes 29, 30 and 32. The Registrar refused the application under Section 3 (1) (b) on the grounds that the food and beverage market included many traders, the surname NICHOLS was common because it or its phonetic equivalent “Nicholls” appeared 483 times in the London telephone directory, and therefore it was unlikely that consumers would perceive the mark as an indicator of origin.

    Under its official practice, if a surname appears in the directory 200 times or more it will be regarded as common. The Patent Office’s practice has been to regard common surnames as incapable of distinguishing goods or services, such as ordinary consumer products, where a large number of traders are involved. The name may not be regarded as devoid of distinctive character for more specialist goods or services, but each case had to be evaluated on its facts.

    Nichols appealed to the High Court, who referred a reference to the ECJ under Article 234, asking in what circumstances a trade mark consisting of a single surname should be refused registration under Article 3 (1) (b) of the Trade Marks Harmonisation Directive and whether such an application must be refused if it is a common surname in the relevant member state and has not acquired distinctiveness.

    The Advocate-General noted that personal names were expressly regarded as registrable trade marks under Article 2 of the Directive. He recognised that any method of determining whether a personal name was devoid of any distinctive character necessarily involved some subjectivity. Nevertheless, the Patent Office’s method of the assessing distinctiveness of surnames differed from the method preferred by the ECJ.

    Explaining, the Advocate-General stated that the ability of a surname to distinguish had to be assessed in the context of the specific market concerned. Ordinary surnames might be commonly used to denote goods or services in one area of trade, but not in others. Nevertheless, the distinctiveness of surnames could not be assessed differently to that of other types of word marks, and the test was therefore whether the mark could enable the average consumer to identify the product or service designated as having been manufactured or marketed under the control of a single brand owner, who was responsible for its quality.

    When this test is applied, common surnames may lack the capacity to distinguish goods or services in fields where surnames are often used to designate commercial origin. However, that finding must be specific to the facts and circumstances and must not be made in an abstract, arbitrary or all-embracing manner.

    The Advocate-General did not consider it appropriate to take account of a general interest in ensuring that common surnames remained available for all to use under Article 3 (1) (b). Article 3 (1) (b), which provides that a sign shall not be registered if it is devoid of any distinctive character, is concerned purely with whether a mark can indicate origin. How common a surname was could be taken into account in assessing its distinctiveness, but could not on its own be decisive.

     

    Comment

    This opinion, followed by the ECJ just before we went to press, sounds the death knell of a long-established U.K. examination practice.

    This is rightly so. The practice of determining whether surnames are registrable by reference to a telephone directory and an arbitrary number puts the cart before the horse. The question should not be whether a surname meets arbitrary criteria, taking account of the goods and services and the nature of the trade. Rather, it should be whether, taking account of the goods and services and the nature of the trade, the name is capable of distinguishing those goods or services from those of other traders. The answers might sometimes be the same. At other times they will not. It is important, therefore, that the examination process be correct.

    Lest any readers feel a tug of schadenfreude, it should be remembered that standardised criteria of the kind employed by the Patent Office are considerably easier to apply than the proper, but woollier, assessment advocated by the Advocate-General. Moreover, the Patent Office’s practice was not entirely wrong; in respect of more specialist goods or services at least, the Patent Office recognised that the facts could be pivotal. Nevertheless, despite the attractiveness of a standard test, it is unlikely that one could ever be devised that would cover all possible combinations of fact and thus avoid the charge of being abstract and all-embracing. The day of the yardstick measure of distinctiveness is done.