First published in the Lexis Nexis Australian Intellectual Property Law Bulletin, February 2008
Some of the world's biggest brands are not invented words but are built around surnames and given names, often of their founders. There are McDonald's, Ford, Tiffany's, Yves St Laurent, Gucci, Louis Vuitton, Moet Hennessey, Chanel and Ferrari, just to name a few.
Obviously in these big businesses the registration of those words as trade marks in the jurisdiction in which they trade are a crucial part of their asset protection strategy, but even start-ups often want to register their name as a trade mark at the outset, particularly in consumer goods industries and where there has been a good deal of upfront capital expenditure in launching the brand.
However, in the parlance of the trade marks law, a surname is considered unlikely to be 'of itself, distinctive', unless it is represented in a special or particular manner. This means that obtaining the protection of a word trade mark for a brand name that is a surname can be beset with challenges.
What about given names? What are the chances of getting 'Steve's' registered as a word mark for a manufacturer and retailer of surfboards? Or 'Matt's' or 'Dave's' as applied to articles of apparel?
Generally speaking, given names are considered simply too common to ever be inherently distinctive of a particular product if the product is commonplace, and unless evidence of prior use can establish that distinctiveness, the application will fail. That may not be the case if the given name itself is so famous, that there is an immediate association (for example, 'Elle' or 'Elle's' in relation to lingerie) so that if the application is lodged by Elle ('the Body') Macpherson or consented to by her, then acceptance would follow.
Note, however, that if a third party had lodged the application without Elle's consent, an objection would arise under s43 of the Trade Marks Act 1995 (Cth) as it is likely the mark would deceive or cause confusion in connoting a connection with Elle that it does not have.
Epponnee Rae from the television series Kath & Kim, on the other hand, is such an unusual (possibly even unique) name that it would probably be considered inherently adapted, or at least to some extent inherently adapted, to distinguish baby clothes. Indeed, Kim Craig nee Day's beautiful baby daughter (known as Eps for short) is probably famous enough to qualify under the 'famous name of the applicant' treatment anyway, as described above with the reference to 'Elle'1.
Full names do not pose so much of a problem. Unless the name is a common one, such as John Smith, there will often be prima facie acceptance even for commonplace goods and services. For example, Cristina Re has her name registered as a word mark in classes 8, 9 and 16 for goods related to scrapbooking, craft and stationery, along with several versions of her signature as composite and fancy marks2. The only registration containing the names John and Smith, on the other hand, is for a composite mark for the label of John Smith's Bitter in class 32 for beers..3
If using the full name is not suitable, the Trade Marks Office Manual of Practice and Procedure suggests that adding two or more initials to a surname, or even one initial provided it is an uncommon one, such as X, will smooth the way to an examiner's acceptance of the name as a word mark. Another alternative is to apply for use of the applicant's signature (which is registered as a fancy mark rather than a word mark), as these have long been considered prima facie registrable.
The bushmen's outfitter R.M. Williams P/L seems to have adopted this approach, having registered a number of composite and fancy marks over the years, including one that appears to be the founder's usual signature4, (and which is endorsed as such, in accordance with the examiner's practice). It is notable, though, that their recent application for 'R.M. Williams Bush Telegraph' as a word mark is still under examination. The company also has a number of registrations of a fancy mark that appears at first glance to be the stylised signature of the founder (including one registration in class 32 for beers and beverages). On closer examination of the registrations it is apparent that this is not his usual signature, the registrations having no endorsement to that effect. However, this 'signature' was clearly considered to be distinctive nonetheless, even if not genuine, and therefore acceptable for registration5.
Trade mark examiners' practice
Trade mark examiners are told to use the Search For Australian Surnames (SFAS) online search facility, which will return a result for whether a particular word is a surname and how many times it appears on the rolls if it appears more than once. A name is considered a surname if it appears at least once on one of the electoral rolls. This number is referred to as the SFAS value, and examiners have been instructed that if the SFAS value is greater than 750 there should be a ground for rejection raised unless the goods are not commonplace.
The Trade Marks Office Manual of Practice and Procedure gives 'cyclotrons or railway coaches' as examples of goods so singular as to warrant prima facie acceptance even when the name has an SFAS value 'well over 750'. In contrast, it gives examples of 'commonplace goods' as 'clothing or cakes'6.
This practice is less controversial than the previous practice whereby a name that appeared in the Australian electoral roll more than 400 times was not registrable, leading to judicial criticism that such a policy has no foundation in the Trade Marks Act 1995 (Cth) and therefore is 'devoid of any legal justification'.7
A pity that there is no online 'Search for Australian Nouns' or SFAN, returning a result for how many times a particular word has been used in the last 12 months, which might point to commonality of a particular good or service.
Traditionally, in their assessment examiners have looked at such things as the number of businesses providing products or services of the type covered by the application and the prevalence or otherwise of the use of surnames in the sector.
Electronic databases such as the Yellow Pages online and internet search engines such as Google can be used for such rudimentary searches. For example, a Google search for 'cyclotron' limited to pages from Australia produces 15,900 hits, whereas 'cake' returns about 1,310,000 results. If you were trying to get 'Steve's' registered for the applicant Steve's Surfboards P/L, 'Surfboard', on the other hand, returns about 166,000, suggesting that goods described as surfboards are relatively commonplace in Australia. Does this mean that Steve's Surfboards P/L's application will receive an adverse report? Probably, as even though there are no SFAS for given names we can be pretty confident that 'Steve' will be considered a common given name.
|
Table 1 Summary of the examiner's current practice in regard to names |
|
|
Type of Name |
Practice |
|
Will be rejected initially as having limited inherent capacity to distinguish, unless the goods or services are very specialised and the surname not extremely common. |
|
Common surnames with other well-known meanings |
If it presents as a surname, it will be treated as above unless it also has a meaning which refers directly to the goods or services in question, in which case it will be rejected as having no inherent capacity to distinguish. If it does not present as a surname it may be accepted if it is not extremely common, the goods and/or services are specialised, and there is a history of such marks being accepted without evidence. |
|
Common surname and uncommon single initial. Common surname and two or more initials. Uncommon surname (less than 750 SFAS) with or without initials. Signature (a fancy mark, not a word mark) |
Will be prima facie accepted. |
|
Full names of persons |
Will be prima facie accepted unless the name as a whole is extremely common and the goods and/or services are also commonplace. |
|
Two or more surnames |
Will be prima facie accepted unless the application is for two surnames, the first of which is also common as a given name, in which case it will be treated as the full name of a person (see below). |
|
Famous names |
Will be prima facie accepted where the name has a connection with the goods and/or services (and they are not 'image carrier' goods such as photographs and the like) and the applicant is the famous person or has their consent; but not where the applicant is a third party, (unless the goods and/or services are clearly outside the area of notoriety of the famous person, or the famous person has been long deceased). |
It has been suggested that because 'a Christian name does not operate as a personal identifier in the same way as a surname8', that it is 'common business practice in our society to identify a person or a person's enterprise by their surname, rather than their Christian name' and that therefore 'there is a greater need to protect the right of traders to use their surname' so 'as the same importance is not ascribed to Christian names, I do not believe that traders are unfairly restricted if registration of Christian names is allowed to continue.'9
Registrability is one thing but, as noted above, the traditional view has been that evidence of prior use will always be required in the case of a common given name to be applied to commonplace goods and services. Unless a startup has evidence of prior use in an offshore jurisdiction, applications for this type of word mark is likely to be difficult.
It is notable that the Trade Marks Office Manual of Practice and Procedure gives many examples (some added as recently as November 2007) and deals fairly comprehensively not only with surnames, but also with words that can be recognised as surnames, famous names, combinations of names and descriptors, combinations of two or more surnames, various combinations of common surnames and one or two initials, and given and surname combinations. However, it does not tackle the issue of given names by themselves.
It seems logical that common given names would be treated in the same way as common surnames, in that if the goods or services are very uncommon, or the mark is represented in an unusual way or with embellishments that are themselves distinctive (more than scrolls, wavy lines and the like), then they may be considered capable of distinguishing. Deciding on the degree of commonality could be vexing, however, particularly with regard to given names in languages with which the examiners are not familiar.
European Union and New Zealand practice
The European Court of Justice (ECJ) is firmly of the view that commonness of names is not the be-all and end-all, at least in so far as surnames are concerned. The Advocate General of the ECJ was of the view that the commonness of a surname is only one factor in determining the distinctiveness or otherwise of a name, and should not be the decisive factor10. The court declined to acknowledge that the name's commonality was a relevant factor to take into account, simply saying that 'the criteria for assessment of the distinctive character of trade marks constituted by a persona name are … the same as those applicable to other categories of trade marks. Stricter general criteria of assessment … cannot be applied.'10
In New Zealand, the Intellectual Property Office has taken Nichols into account in its practice guidelines, including its guidelines on what it calls 'single forenames'; in other words, given names.
It suggests that marks that consist of forenames will normally be accepted as having sufficient distinctive character for registration, unless the application is in respect of goods that are often adorned with forenames, like mugs, jewellery, keyrings and personalised stationery, or the application is in respect of services where it is common to use forenames as brand names. The examples they give are restaurant, café, hairdressing and beauty salon services.
Application for 'Steve's'
So where does this leave Steve's Surfboards P/L's application for the word mark 'Steve's'? An objection would be raised (according to the NZ guidelines) if there was sufficient evidence to show that forenames are commonly used in the manufacture and retail of surfboards and therefore that consumers are unlikely to perceive the forename as distinguishing the services of one undertaking from the similar services of another undertaking.
A look at the Australian Yellow Pages online directory reveals that not a lot of retailers or surfboards use only their first name to denote their businesses, but then interestingly it also reveals an actual listing for a 'Steve's Place' in Robe, SA. In the manufacturer's listings, there are virtually no given names used without a surname in the list of trading names, but it is noticeable that businesses in this group that use their proprietor's or founder's name in their trading name tend to distinguish themselves from others in the group by using the whole name in their trading name. It seems an objection would be raised on that basis.
To trade mark 'Steve's' it appears it may be necessary to provide evidence of prior or intended use to satisfy the Registrar that it does or will distinguish the goods and services as being those of the applicant or, if this evidence is not available, the better option may be to develop and apply for a composite mark instead of a word mark.
Incidentally, an Australian trade mark online search system (ATMOSS) search reveals that the word 'Steve's' is currently registered in classes 30 and 42 by Steve's Homemade Icecream Inc of Lindenhurst, NY, and has been registered since the mid '80s, so Steve's Surfboards P/L probably shouldn't give up too easily.
Footnotes
1 See Trade Marks Office Manual of Practice and Procedure, para 18.2.
2 Refer to trade mark number 1150204.
3 Refer to trade mark number 507374.
4 Refer to trade mark number 1043367.
5 Refer to trade mark numbers 1055108 and 1164991.
6 Trade Marks Office Manual of Practice and Procedure Chapter 16 Introduction.
7 Companhia Souza Cruz Industria E Commercio v Rothmans of Pall Mall (Australia) Ltd (1998) 41 IPR 497, BC9802564 at 503, per Wilcox, J; an appeal from a decision in which opposition to a mark containing the word 'FREE' was upheld on this basis even though it was incorporated into a logo and was not chosen for its surnomial significance.
8 Sassaby Inc v Janet Cosmetics Pty Ltd (2001) 54 IPR 425 at 427.
9 Above.
10 Nichols plc v Registrar of Trade Marks [2005] All ER (EC) 1.
11 Above.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.