Which entrepreneur does not dream about their last name becoming such a recognizable brand as Chanel or Gucci, or to mention examples from the Polish domestic market – Blikle or Grycan? The use of a recognizable last name of the company's founder is a common marketing practice. So how to obtain legal protection for the last name which is deemed to be a distinguishing mark of a particular company?
It has been until quite recently that the legislator did not mention directly the last name as a category of a trademark, which might have been the reason for some controversies over the possibility of its registration. However, the circumstances have substantially changed as a result of the most recent amendments to the Polish Law on Industrial Property responding to the requirement of harmonization of the national provisions to the Regulation on the Trademark of the European Union. Currently, the legislator mentions two criteria which must be fulfilled by the last name in order to be registered as a trademark by the Polish Patent Office. First of all, the last name must enable to distinguish the goods of one undertaking from those of others, and secondly it must be capable of being represented somehow in the register of trademarks. The waiver of the requirement of a graphic representation of the mark can mean in practice that also those last names which are represented in an unconventional manner, for example as holograms or sounds, can obtain legal protection. What is stressed, the last name as a trademark must fulfill the criterion of distinctiveness, namely it must inform a potential consumer about the origin of goods from a particular undertaking and must also possess some characteristic features which will be remembered by consumers. Fulfilling the latter criterion may be difficult for the last names which are relatively common, so in this case the creativity and inventiveness of entrepreneurs is important. It may be much easier to obtain registration for a trademark being the last name incorporating additional individual distinctive elements, such as graphic elements or fanciful typeface.
However, what is important, the entrepreneur must remember that his activities undertaken to build one's own brand cannot be detrimental to another entrepreneur who registered his last name as a trademark with earlier priority, and thus cannot be detrimental in particular to the renowned character of the earlier mark. One of the famous cases discussed in mass media was an attempt to register a trademark "Balcerzak Junior". The District Administrative Court upheld the decision of the Patent Office on refusal of granting protection for the aforesaid mark "Balcerzak Junior", arguing that a son of the founder of the company "Balcerzak" had intended to make a free ride on the reputation of his father's earlier trademark "Balcerzak", thus taking undue advantage.
Undoubtedly, registration of one's own last name helps to build personal brand of the entrepreneur. The current regulations are promoting this process and allow broad creativity in the scope of making oneself distinctive from among competitors on the market. However, on should bear in mind that the process of building one's own brand should be considerate and based upon evoking positive associations with high quality of the offered goods or services, rather than evoke associations with a conflict with another entrepreneur.
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.