Can I register my surname as a trademark?

Under US trade mark law, a trade mark that is used mainly as a surname cannot be registered without proof that the mark has acquired distinctiveness through use. In the EU filing surnames as trademarks can be registered relatively simply under the EUTM process.

Under the EUIPO (formerly OHIM) guidelines, surnames are generally considered distinctive. This was confirmed by the European Court of Justice in 2002 in Case C-404/02 Nichols which stated, “The criteria for assessment of the distinctive character of trade marks constituted by a personal name are therefore the same as those applicable to the other categories of trade mark.”

Famous surnames that have been registered as EUTMs include O’BRIENS, Michelin, Benetton.

This does not mean that no problems will arise! Article 12 of the new EUTM governing regulation provides that, “An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade……the name or address of the third party, where that third party is a natural person” — provided such use is “in accordance with honest practices in industrial or commercial matters.” This means that if a third person is using their own name which is the same as your name- you may not be in a position to prevent them- just because you have a registered trademark.

Up until the new Regulation was implemented on March 23, 2016, this “own name defence” for EUTMs was applied to business/company names as well as personal names (see ECJ decision of Céline SARL v Céline SA, Case C-17/06. Now however only natural persons can use this defence, i.e., companies can no longer rely on the use of their company or business name as a defence to infringement of an EUTM.

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