When applying for trademark registration, it's important to remember certain related limitations. It's particularly important to note that registration is not permitted for signs that are incapable of distinguishing the goods for which they are applied for, or for signs that consist solely of elements that may serve to indicate, in particular, the type of product, its origin, quality, quantity, value, intended use, method of manufacture, composition, function, or usefulness. Less common grounds for refusal include trademarks that offend religious beliefs or good customs. It's difficult to classify the registration of a surname, first name, or both a first name and surname as falling under any of these grounds for refusal. Ultimately, a surname will not be semantically linked to the goods or services provided under the trademark. Obviously, no surname provides information regarding the composition, function, or quality of a given product. Case law has also confirmed that the most common or common surnames can also be registered as trademarks. Their recognizability may at most translate into a lower distinctiveness of the signs containing them.
When registering trademarks containing similar first and last names, there may be a risk of conflict related to misleading consumers, as with other trademarks. Case law has established certain principles that will determine whether one trademark may infringe upon the registration of another. In the event of a conflict between a trademark containing a first name and a trademark containing the same first name but also a surname not present in the first mark, infringement does not occur. For example, the court found no infringement in the case of the Chiara vs. Chiara Ferragni or Anna vs. Ana de Altun trademarks. This stems from the fact that the combination of a first name and surname identifies a specific person, which is not the case when only the first name is provided, as it refers only to someone with that name, but no one in particular. Similarity was found in the Amanda vs. Amanda Smith case, given that a rather rare first name was paired with a very common surname. This is even more true when two trademarks containing the same first names but different surnames are combined. However, infringement will often occur when marks containing both a first name and a last name have the same last name.
In summary, registering trademarks based on a surname or first name and surname will always be permissible. However, it will be necessary to verify each time whether it is possible for entities that have previously registered similar trademarks to object to our registration.
This alert is for informational purposes only and does not constitute legal advice.
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