News: How to register the namesake brand and avoid a refusal?

How to register the namesake brand and avoid a refusal?

Nowadays name and surname are not only the passport data for the business owner. They are also a way to emphasize his products on the market. However, it is not sufficient to represent a surname to perpetuate a trademark. Only registration of a trademark entitles the monopoly to use one or another name in relation to services or products. This rule extends also to the verbal TM, which include name or surname. Neglect of this rule may lead to the refusal of registration or court proceedings with rightholder in relation to the trademark including identical name. To avoid such negative consequences for your brand, the nuances connected with its registration should be taken into account.

The evidence from practice has shown that for the last few years contradictions between brands and persons bearing the same names became more frequent. TheFashionLaw reports that in 2018 the Japanese entrepreneur Kenzo Tsujimoto was denied to register the trademark called Kenzo Estate. In the process of expertise it was revealed that the surname of the entrepreneur is identical to the famous brand KENZO. It this case the activities of the entrepreneur under the brand Kenzo Estate would mislead the public as it would be associated primarily with the products of KENZO. In such circumstances the refusal to register the namesake TM was obtained by the entrepreneur Uberto Gucci. The great-grandson of the founder of Italian fashion house Gucci desired to register the namasake trademark in the USA, However, lawyers of the fashion house submitted an objection concerning such registration. In their point of view, the TM Uberto Gucci would lead to the «dissolution» of the trademark that has already been registered. In the same way, the identical trademark would mislead the consumers in relation to connection between two designations, which include the identical name. Attempts of the American entrepreneur Chanel Jones to use personal name in the title Chanel’s salon - own spa-salon, also were not successful. Lawyers of the Chanel claimed that such violation of trademark rights of the fashion house would lead to obtaining benefits from the reputation of the internationally known brand. From February 2015, the entrepreneur ceased use of the word «Chanel» in the title of the salon.

Generally, the attempt to register the namesake brand when the identical or similar trademark, is corresponded by the refusal. Thus, the competent office may refuse to issue the certificate for the namesake TM on the following basis:

• misleading the public;
• «dissolution» of the famous brand, which was previously registered;
• obtaining of the financial benefit at the expense of the famous trademark that have similar or analogous name.

In case of circumstances hereinabove, the coincidence between surnames of entrepreneurs and names of fashion brands became critical. Nevertheless, the superiority principle has a crucial meaning in the trademark registration. Operation of this principle depends on particular jurisdiction where the applicant desires to obain the certificate for the namesake TM.

«Primacy in use» means that the right for the trademark belongs to the person who first used particular designation for goods or services (USA).

«Primacy in submission of an application» - holder of rights for the trademark is the person who first submitted an application and all necessary documents for the TM registration (most EU countries, Japan, China).

Thus, according to the US legislation, even if the person does not register the TM but uses the designation for services or products earlier than others, he will have the priority in case of dispute about availability of rights on the designation. Using the namesake brands by Kenzo Tsujimoto, Uberto Gucci and Chanel Jones in the territory of the USA would be considered as lawful in case they began operations under these business names earlier than others.

In most jurisdictions it is not prohibited to operate under the personal name. However, this right is not absolute. As an example, the individual entrepreneur Voronin may make the customized men clothing. On the contrary, if this entrepreneur wishes to designate his products by the trademark «Voronin» in the class 25 (clothes), he will get a refusal to register the namesake brand in the US territory. First, the homonymous designation is already used in this jurisdiction. Second, the certificate of the TM «Voronin» has already been obtained in the country in the same class. Thus, the priority principle is applicable.

How to act if the identical trademark has already been registered?

Only holder of trademark rights may allow or prohibit others to use it. Similar procedure is applicable when you do not want to register the trademark, which is not identical to the name of the public figure. To illustrate, in 2014 the patent office of the USA refused to register the name Pink Putin because the applicant did not provide the relevant authorization from the politician.

It should be noted that this rule is applicable only if the name or surname of the applicant is identical to the names, which are famous to the wide audience. If the criterion of the «wide publicity» is not applicable to the entrepreneur, the availability of already registered designations, which are similar in particular class of the International Classification of Goods and Services, may serve as a background to refuse the TM registration. For example, if the person wishes to obtain the certificate in the 14th class (jewelry) but the analogous designation has already been registered for the network of catering establishments (class 43), presence of the same name won’t be a basis to refuse the registration.

Unconditionally, each case is individual. Certain restrictions depend on presence of similar trademarks and their publicity. Legislation of the country where you desire to obtain the certificate of the trademark is also important. As an example, in countries of the South America similarity of your designation woth one of the key figures of the communist party won’t be an obstacle in the registration of your TM. On the contrary, number of former Soviet states you may encounter a refusal.For instance, from April 2015 trademarks, which include surnames if former heads of the communist party during the Soviet period, are not subject to registration in Ukraine. That is why to avoid the refusal and other negative consequences in relation to the namesake brand, it is necessary to conduct the preliminary search among trademarks, as well as to analyse the legislation of the jurisdiction where you intend to obtain the trademark certificate.