Can I trade mark my name?

Traditionally under UK law, surnames have been considered non-distinctive and thus unregistrable, shown in the case of Elvis Presley Trade Marks [1997] RPC 543, 558. The decision to exclude surnames was partly motivated by the inconvenience it would cause to other traders who share the same name.

However, under the 1994 Act there is no explicit exclusion of surnames, or personal names, and the question of registrability is determined by the same standards as for other marks. The question will be whether the average consumer of the goods would assume that the name operates to indicate one particular manufacturer or supplier. In Nichol’s Trade Mark Application the ECJ made clear that the unfair advantage obtained by the first person to register a name over other traders who might wish to use it is irrelevant. Despite this, the aspect of commonness may be relevant to the consumer’s likely appreciation of the specific name as an indication of origin of the specific goods.

An example of how the Appointed Person would determine registrability is provided in Oska’s Ltd’s Trade Mark Application. When assessing the opponent’s earlier mark, ‘MORGAN’, for clothing, Richard Arnold QC, under the guidance of the ECJ, took into consideration a number of factors. These were as follows: the commonness of the name ‘Morgan’, the frequency with which names were used in the clothing trade, and the numbers of traders in the clothing field, and concluded that the average consumer would regard the surname as devoid of distinctive character. It was submitted that usually the average consumer would expect the addition of a forename; examples include Ted Baker and Paul Smith.

A ‘loophole’ in those cases where the name itself lacks distinctiveness can be found where the name takes the form of a person’s signature. Under the 1994 Act a ‘signature’ may be registrable even if it is not written in a distinctive graphic style.

In conclusion, it is possible to register your name as a trade mark provided the Trade Mark Office of your country or the country for which you are seeking protection considers it “distinctive”. Whether a name will be considered distinctive or not will depend on the factors discussed within the case law included.

Harry Jeffries Southampton Solent Law Student