Businesses Using Surnames as Trademarks Lose “Own Name Defense” under New EUTM Regulation

Lexology recently highlighted some issues regarding surnames as trademarks under the new European Union Trade Mark regulation, available here. In short:

Under U.S. trademark law, a mark that is primarily a surname cannot be registered without proof that the mark has acquired distinctiveness, meaning that consumers associate the mark with the applicant because of the applicant’s extensive use and promotion of the mark. In the E.U., surnames are generally considered distinctive, even if the surname is relatively common.

Although a surname can be registered relatively easily as an EUTM by the EUIPO, the proprietor may face some difficulty later on when trying to enforce its trademark rights. Article 12 of the new EUTM regulation specifies that companies can no longer rely on the use of their company or business name as a defense to infringement of an EUTM. Before this regulation was implemented on March 23, 2016, this “own name defense” for EUTMs applied to company or business names as well as personal names. In Céline SARL v Céline SA (C-17/06) The CJEU previously determined that since use of a company name also relates to the goods or services offered by the company, trade name use of a protected trade mark may be treated as an infringing act, if the requirements of use for goods or services are met. The “own name defense” is now only available to for natural persons, if the use is honest.