Trademarks

What's in a Name?

OHIM’s opposition practice is to find trade marks that consist of, in the one case, a surname and, in the other case, a full name including that surname confusingly similar. The one possible exception to this rule is the presence in both marks of a common surname.

This rather inflexible practice has now been confirmed by the CFI in a case (Barbara Becker v Harman International Industries; T-212/07) involving a CTM application for the trade mark Barbara Becker. The eponymous applicant had filed her application in Class 9. It was opposed by the US opponent on the basis of an earlier CTM registration for Becker covering identical and similar Class 9 goods.

Following OHIM’s practice to the letter, the Opposition Division found a likelihood of confusion and rejected the CTM application. According to the Opposition Division, the two marks had visual and phonetic similarities and were conceptually identical. On appeal (R502/2006-1), the First Board of Appeal took a different view. They found that the two marks had a low level of visual and phonetic similarity, given the presence of the name Barbara at the beginning of the CTM applicant’s mark. Turning to the conceptual comparison, the Board accepted that Becker was a well-known surname (because of its association with the tennis player Boris Becker), as well as a common surname (at least in Germany). The trade mark Barbara Becker on the other hand was likely to be recognized as the full name of the tennis player’s ex-wife. Taking all of this into account, the Board found that the two marks were clearly distinct and rejected the opposition.

Harman appealed to the Court of First Instance and the Court reversed the Board of Appeal’s decision. Relying on earlier case law in which the names Enzo Fusco and Antonio Fusco were found to be confusingly similar, the Court ruled that, at least in Italy, consumers generally attribute greater distinctiveness to the surname than to the forename in trade marks. In addition, according to the Court, the surname Becker had a stronger distinctive character than the name Barbara in the CTM mark and retained an independent, distinctive role in that mark. In view of this, the Court decided that the two marks were confusingly similar and rejected the CTM application.

In the writer’s view, it is bad enough that common surnames, such as Becker, should be accepted by OHIM as inherently distinctive for all goods and services. Now that extremely lenient practice has been compounded by allowing the owners of such marks to prevent the registration of later marks that are full names containing that surname.

It is submitted that there are some surnames that are so rare and well-known that they are likely to be confused with a full name containing that surname. Einstein and Albert Einstein and Picasso and Pablo Picasso might be examples of such a situation. However, in the majority of cases, a surname and a full name containing that surname should be clearly differentiable one from the other, visually, phonetically and conceptually. To do otherwise is to give the owners of, in most cases, marks of limited distinctiveness, such as common surnames, a breadth of protection that is unjustifiable. In most instances, if the owner of a CTM registration for a surname wishes to prevent the registration or use of a later mark for a full name containing that surname, they should be required not only to prove a significant reputation in that surname throughout the EU, but also to show that the relevant consumers are likely to assume that goods bearing the later, full name mark, come from the same source as the earlier surname mark.