How Distinctive Is Your Own Name?

Gokcen Uzer Cengelci / Lisa Wright,

“What’s in a name? That which we call a rose by any other name would smell as sweet”. This profound quotation from the tragedy ‘Romeo and Juliet’ by English playwright William Shakespeare suggests that names themselves do not hold worth nor meaning - they simply act as labels to distinguish one person or thing from another. 

Over the years many of us have gone on to use our personal names as trademarks as a means of distinguishing our goods and services - so that the buying public connects our goods and services with us through that mark.

Using personal names as trademarks

In the EU the actual mechanism of filing first, middle or last names as trademarks is relatively straightforward via the EUTM process. Under EUIPO guidelines this has been explained in principle, namely that there are no specific criteria to be taken into account when likelihood of confusion between names is assessed. This distinctiveness 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.”

However personal names are still treated as special cases in the EU and are stated as such in the EUIPO guidelines because of the very nature of personal names. There are certain aspects that come into play that have to be carefully considered and balanced, such as whether a given first name and/or surname is common or not in the relevant territory. In other words, the perception of signs that are made up of personal names may vary from country to country within the European Union. The likelihood of confusion between personal names depends on the overall assessment of signs. 

Although every first name/surname combination will be evaluated on its own merits, it is accepted in general that whenever two signs share the same first name and one of the two also contains a surname, and when the first name is likely to be perceived as a common name in the relevant territory, the rule of thumb is that there will be no likelihood of confusion, since consumers will be aware that there are many people with that name. Yet, it is not always an easy task to assess… 

Defense of the right to use a name 

These kinds of dispute claims typically bring the defense of the right to use a name with them. The rejection of a trademark that is made up of a personal name, based on the fact that there is a prior registration of the same name, will not be accepted and will not preclude the right to the use of that name. This kind of claim is not valid as Article 14 of the 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” - as long as such use is - “in accordance with honest practices in industrial or commercial matters.” 

In other words, the registration of trademarks does not hinder the use of any names of natural persons, due to the special protection provided by Article 14(1)(a) EUTMR and the relevant national trademark laws according to Article 14(1)(a) of the Trade Mark Directive. 

CJEU case law on likelihood of confusion

Article 8(1) is applied for the conflict of trademarks in opposition procedures in the EUIPO. Accordingly it is not hard for the courts to understand any double identity - where the subject trademarks and the goods and services are similar - but it is not so easy for them to assess any likelihood of confusion. 

This is due to the fact that the confusion itself is not defined in the regulations. Well-established case law of the Court of Justice of European Union (CJEU) holds that the concept of likelihood of confusion refers to situations where either the public directly confuses the conflicting trade marks, or somehow makes a connection between the conflicting trademarks by assuming that the subject trademarks are coming from the same undertaking. This last example is also defined as likelihood of association. 

To assess the likelihood of confusion, phonetic, visual and conceptual similarity need to be evaluated on a case by case basis. However a global assessment also then needs to be taken into account. This enables the examiner to weigh up other factors that are relevant to deciding on any likelihood of confusion in that particular case - such as the relevant public’s level of attention or the distinctiveness level of the prior trademark.

And, as with any other case, there is no exception made by the courts when it comes to cases related to conflicts of first names/surnames - the global assessment is always taken into account. Accordingly, a name is not always enough to distinguish one thing from another and negate any likelihood of confusion - as demonstrated in Luciano Sandrone v. EUIPO [2019] (EU:T:2019:452).

Analysis of trademarks composed of personal names to establish likelihood of confusion

Mr. Luciano Sandrone, filed a trademark consisting of his first name and surname LUCIANO SANDRONE for goods and services in classes 16, 33, and 35. On November 16, 2015, the Spanish Company J. Garcia Carrion, SA filed an opposition against the application based on its earlier EU word mark DON LUCIANO in class 33. The opposition was rejected based on the fact that the similar Luciano element has less distinctiveness and that the consumer will mostly pay attention to the surname. 

The Spanish company appealed the case and the Second Board of Appeal of the EUIPO  annulled the Opposition Division’s decision and upheld the opposition. So the applicant then appealed to the General Court.

Taking a global assessment of any likelihood of confusion, the General Court held that for the mark DON LUCIANO, the ‘Luciano’ element was more distinctive than ‘Don’ because ‘Don’ was shorter and was used as a title in Italian and Spanish. The Court also made a similar evaluation on LUCIANO SANDRONE and found SANDRONE is more distinctive. 

The General Court held that the Board of Appeal had not correctly carried out a global assessment of the likelihood of confusion since it had failed to take into account all of the relevant factors. According to the General Court, a conceptual comparison was not possible in this case. The Court stated that the first name, “Luciano,” and surname, “Sandrone,” used by the sign neither conveyed a general and abstract idea nor any “semantic content'' and found that the Board of Appeal had been wrong to determine that average conceptual similarity existed. Accordingly there was no likelihood of confusion between the two signs and the General Court upheld the applicant’s claim in the appeal.

More than a name in common? 

We took a look at the trademark activity of both Lucianos using our preliminary trademark search and business intelligence tool, ExaMatch to see if they had anything else in common!

Luciano Sandrone

The application for this individual word mark was filed almost 5 years ago in July 2015 with the EUIPO. The trademark is owned by Italian company, Luciano Sandrone, filed by their representative, Antonio Borra, and its status is currently still pending with 1 opposition having been filed against. The top products for this mark are found in Class 16 (Printed Matter), 33 (Wines and Spirits) and 35 (Advertising and Business). 

When looking at the overall trademark history of this owner we can see that the owner registered their very first trademark in 2013 and currently has 12 live trademarks, spread between the EUIPO (7 marks), WIPO (2 marks), the USPTO (2 marks) and Italy’s UIBM (1 mark). The top product is found in Class 16 (Printed Matter). 

Don Luciano

There are 2 individual word marks, bearing the mark text DON LUCIANO currently registered in the EUIPO. The trademark application for DON LUCIANO was made in April 2001, with an application for FIZZY DON LUCIANO made some 15 years later, in November 2016. The 2 marks are owned by Spanish company J.GARCIA CARRION, SA. Their representative was Aymat Escalada Carlos.

Top products for the 2 marks in question are found in Nice Classes 32 (Light Beverages), 33 (Wines and Spirits) and 35 (Advertising and Business). 

Overall the owner currently has over 600 live trademarks and is an aggressive owner when it comes to brand protection. Including the opposition to Luciano Sandrone, they have filed 65 oppositions to date, with the most protected brand being DON SIMON. The subject trademark, DON LUCIANO is one of their most litigious trademarks. Other conflicts in the same registry based on this trademark was against the trademark LUCIANO ARDUINIi and L'ORO DI LUCIANO. The top 3 registries are the Spanish OEPM (32.1%), the EUIPO (12.1%) and China’s CNIPA (7.6%).

Names that sound similar, names having meaning

As previously stated, the issue of global assessment covers lots of factors - including not only conceptual, phonetic and visual similarity and the distinctiveness level of the trademarks - but also taking into account other factors, such as the attention level of consumers in the subject industry, and so on. For example in Turkey LUCIANO is not a traditional personal name, so it will be extremely distinctive, Whereas in Spain the same name is fairly common and will therefore be less distinctive!  

We ran a clearance search using our AI tool NameCheck for the mark text LUCIANO to check if there any registered marks that sound similar and were therefore a potential threat to the registration of this mark text. We refined our search to just include Class 33 and got even more granular by adding the product description “alcoholic beverages”. We then filtered by registry to make sure that our results only included those found in the EUIPO. 

We then took a further look using NameCheck’s word meanings tab to see whether the word LUCIANO is used in other languages as a personal name - which is of the utmost importance in order to further assess the risk for the relevant consumer. 

Final thoughts

It is not only important to make a global assessment of any visual or phonetic similarity, but also to fully understand the meaning of the word(s) as well. In Turkish the word DON means ‘underpants’ and so the words DON LUCIANO are not immediately recognizable as a personal name (perhaps as more of a personal item!) However in Spain the words DON and LUCIANO would be widely understood as a first name and surname.  

Distinguished webinar presenters   

On Wednesday July 8th we present our live and interactive webinar entitled “Understanding Bad Faith in EU Trademark Law” with speakers Carolina Calheiros and Jan Gerd Mietzel, partners at law at international law firm Rolim, Mietzel, Wohlnick & Calheiros LLP. 

Carolina and Jan Gerd will take any questions on the day and so if you would like to learn more about this issue of EU law, or share your thoughts on the matter during the Q&A, please register now.  

And, if you can’t attend on the day please register anyway and we will make sure that we send you a recording of the event, so that you don’t miss out!

REGISTER

By Gokcen Uzer Cengelci / Lisa Wright
Gokcen Uzer Cengelci, Trademark Counsel at TrademarkNow, worked as a trademark attorney for over 12 years in top-tier trademark law firms where she specialized in opposition procedures and trademark portfolio management strategies. She regularly publishes articles on trademark law and has a deep interest in the role of legal tech in IP. Lisa Wright, Content Writer at TrademarkNow is a graduate of the University of Law. She researches and publishes books, articles, and webinars on global IP law and trademark activity.

Comments