Trademark Registration of a name
A trade mark is a sign which can distinguish your goods and services from those of your competitors and may consist of works, including personal names. Therefore anyone in the UK can apply to register their name as a trade mark. Applicants seeking to register their name must satisfy the criteria for trade mark registration contrary to sections 3, 5 and 7 of the Trade Mark Act 1994 (TMA).
Firstly, a name devoid of distinctive character will not be eligible for registration as it would fail to satisfy the requirements of section 3(1)(b) TMA. An applicant must then prove that the application is not in bad faith as section 3(6) TMA excludes applications to register trade marks made in bad faith. It should be noted, an application by someone who genuinely shares the same name and is trading under that name is unlikely to fall foul of the bad faith test. This section will apply whether or not there is a pre-existing registration of the name in question.
Applicants seeking to file their name as a registered trade mark must also circumvent the relative grounds for refusal of registration contrary to section 5 TMA. Section 5(1) entitles the Trade Marks Registry to refuse an application if the mark is identical to an existing trade mark and is to be used for identical services. Section 5 TMA further prevents registration of a mark which is either identical with an earlier mark and is to be registered for similar goods or services or where the mark is similar to an existing mark and is to be registered for goods or services identical with or similar to it.
Section 7 TMA enables the registration of a mark, which would otherwise be refused under section 5 TMA if the applicant can show that there, is an ‘honest concurrent use’ of his mark and the pre-existing registration. Honest concurrent use arises when a trade mark has been legitimately used over a period of time by two unconnected parties and where both have developed goodwill and reputation in their use of the mark. Accordingly, section 7 TMA enables an applicant seeking to register his personal name which he uses in the course of trade to register his mark despite the existence of a pre-existing mark. While section 7 provides for an application to register the same name, section 11(2)(a) protects persons with the same name from infringing the trade mark. It states that ‘A registered trade mark is not infringed by the use by a person of his own name.’
Furthermore, Chapter 6 of the Trade Marks Registry’s Work Manual insinuates that a surname is likely to be regarded as common if there are more than 100 entries for that surname in the London Telephone Directory. The guidance states that ‘full names have, by their nature, a greater capacity to distinguish the goods/services of one undertaking than a surname per se.’ It therefore seems that, in the majority of cases, an application to register a full personal name will satisfy the criteria for registration unless the full name is remarkably common. The Trade Marks Registry has also expressed that it will consider the number of traders operating in the same or similar market when looking at this issue. Therefore traders in a large market will need a particularly distinctive name before it will be considered acceptable for registration under section 3(1)(b) TMA.
In conclusion, it is apparent that a person may file an application to trade mark their name. However this is subject to the satisfaction of several criteria as discussed above. Furthermore it would also seem that a person is entitled to register an already existing name under provided the criteria of section 7 are established, otherwise it may be refused contrary to section 5 TMA.
By Rachel Pellatt
Southampton Solent Law Student