The power of surnames as trademarks outgrew all known bounds in recent years, following the General Court's ruling that surnames were more distinctive than forenames in Harman International Industries v OHIM (T-212/07).
As a result, any mark consisting of a forename and surname was likely to be regarded as confusingly similar to a registered surname mark. Those lucky enough to hold trademark registrations for surnames could flex their muscles against any later applicants for full names, regardless how different the initial element might be.
On appeal by Barbara Becker, however, the ECJ has reined in the surname phenomenon and re-asserted the need to consider each case on its merits, bearing in mind the overall impression created by the marks and taking all relevant factors into account (Barbara Becker v OHIM, C-51/09 P).
On First-Name Terms
The facts of the case are well-known and have been covered in earlier issues of Make Your Mark. In brief, Ms Becker applied to register BARBARA BECKER as a CTM in Class 9 and was opposed by Harman based on a prior CTM for BECKER in the same class.
The opposition was first upheld, then overturned, and then upheld again on appeal to the General Court. The latter found that consumers tended to regard surnames as more distinctive than forenames, and were likely to pay more regard to surnames in composite forename-surname marks. The General Court did not consider that Ms Becker's fame was likely to have any impact on that fact. It was no great leap, therefore, to its finding of confusing similarity in light of the identity of goods.
This finding was extremely significant, since it essentially meant that a surname was likely to trump any distinguishing power of a forename in a composite mark, and that a composite mark that met with an opposition based on a surname was likely to fail, regardless how different the forename, how common the surname, or how well-known the individual bearing the composite name.
Ms Becker persevered, however, and brought a final appeal before the ECJ. In June that Court handed down its verdict in her favour, finding that the General Court had erred in failing to carry out an overall assessment of confusing similarity, contenting itself instead to find a likelihood of confusion based on its assumption that surnames were more distinctive than forenames.
While the ECJ accepted that in some parts of the EU, surnames might be regarded by the average consumer as more distinctive, it was nonetheless essential to take into account all factors relevant to a particular case when ruling on confusing similarity.
This could include how common the surname in question was, and whether the person bearing the combined forename and surname was in fact well-known. Both factors could have an impact on the overall conceptual impression created by the marks. The answer to whether a surname mark and a forename-surname mark is confusingly similar would not be the same every time.
The ECJ did not rule on whether BARBARA BECKER was confusingly similar to BECKER, rather remitting the case back to the General Court for re-consideration.
However, Ms Becker's fame and the fact that BECKER is a very common surname in Germany are factors that could help the average consumer distinguish the marks in many, if not all, EU countries, much like the average English consumer could be expected to distinguish between the common surname LEWIS and the famous department store composite name, JOHN LEWIS.
The ECJ's ruling is an important reminder that the test for a likelihood of confusion is not a mathematical formula, where values are plugged in and the end result is the answer. Rather, it is a test that requires a feel for the overall impact of the marks at issue on the average consumer, based on all the facts and circumstances of the case. It resists efforts to condense and formulise, or to short-cut based on preconceived principles. It requires every case to be considered on its merits.
In the case of names, it is now clear that composite forename-surname marks will not automatically face doom where they are opposed based on pure surname marks. Equally, though, the owners of surname marks are still in with a good chance where they can show that the overall impression created by the forename-surname mark is sufficiently close to the surname that confusion is likely. Where a surname is quite unusual or has a distinctive spelling that is replicated in the forename-surname mark, a surname mark owner is likely to be in a strong position.
Where a composite mark is likely to be understood differently because of an individual's fame, then there is arguably no likelihood of confusion. The rich and famous may find it a little easier now to secure trademark protection for their full names, even in the face of existing surname rights.