Nichols Plc vs. Registrar of Trade Marks

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. This particular opinion of the Advocate General, however, raises doubt over the prevalent practice, and urges a more judicious approach.

The case:

Nichols Plc, a food and drinks company, applied for registration of the name ‘NICHOLS’ as a trademark in respect of vending machines and food and drinks supplied by them. The UK Trade Marks Registry refused the registration of mark in respect of food and beverages under Section 3(1)(b), as they assessed the mark by looking at how common the name was in the London telephone directory. They decided that the name was phonetically similar to the common surname ‘Nicholls’, appearing 483 times in the London telephone directory and therefore it was unlikely that consumers would perceive the mark as an indicator of origin.

Under UK’s official practice, if a surname appeared in the directory 200 times or more it was regarded as common. The UK Patent Office has always regarded common surnames as being incapable of distinguishing goods or services like ordinary consumer products, where a large number of traders are involved. However, this application was accepted because vending machines concerned a niche market.

The appeal:

Nichols appealed against the decision to the High Court, who cited a reference to the ECJ under Article 234. It deals with the circumstances under which a trademark 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. France and Greece wanted surnames to be treated like any other sign but the UK argued that there was a logical link between common surnames and lack of distinctive character.

The Advocate-General noted that personal names were expressly regarded as registrable trademarks under Article 2 of the Directive 89/104. 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 assessing distinctiveness of surnames differed from the method preferred by the ECJ.

The ECJ held that a surname cannot be refused trademark registration in order to ensure that no advantage is afforded to the applicant, since Directive 89/104 contains no provision to that effect. Whatever difficulty might be encountered in a specific assessment, this could not justify an a priori assumption that the mark is devoid of distinctive character. The distinctive character of a mark was to be assessed in relation to (i) the goods or services involved and (ii) the perception of the relevant consumers, with a specific assessment in each case, and applying the same criteria to all categories of mark referred to in Article 2 of the Directive, even in the case of a common surname.

More stringent criteria for marks consisting of personal names based, for example, on a predetermined number of persons with the same name, or the number of undertakings engaged in the trade in question, or the prevalence or otherwise of the use of surnames in that trade, were therefore not to be applied. The Article 6(1)(a) limitation, which was for the benefit of operators with an identical or similar name, would come into effect only after the registration of the mark, i.e. after its distinctive character had been established. That provision therefore could not be taken into account in the assessment of distinctive character before the mark was registered.

Comment :

[The ECJ’s decision establishes that the assessment of surnames as trademarks do not fall under a different criteria of assessment and must come under the same umbrella of assessment for registrability as any other trade mark. ECJ’s opinion sounds the death knell of a long-established UK examination practice. 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 implication of this case is that the UK Registry will have to change its practice. Unusual names may have an inherent advantage over more common ones but they will all have to be considered at par in the registration process.]