A&F Trademark Ltd v J&J Crombie Ltd ('ABERCROMBIE' Trade Mark)

Date

26 March 2001

Legislation

Trade Marks Act 1994

Keywords

Opposition; surnames; incapable of distinguishing; distinctive character

Counsel

George Hamer, Richard Arnold QC

Solicitors

William A. Shepherd & Son; A.A. Thornton & Co

Judge

Geoffrey Hobbs QC as the Appointed Person

Court

Appointed Person (on appeal from the Trade Marks Registry)

Reported

Unreported

Summary

The applicant applied for registration of the mark ABERCROMBIE in relation to clothing not bearing a tartan pattern, which was opposed as being incapable of distinguishing the goods of the applicant and for being devoid of distinctive character under sections 3(1)(a) and (b) of the TMA 1994 because it is a common Scottish surname.

The evidence established that whilst the mark was a Scottish surname, it was not shown that it was particularly a common one. Section 1(1) of the Act shows that names are not unregistrable per se as trade marks, and so the objection under section 3(1)(a) failed

As to the opposition under section 3(1)(b), the Patent Office practice under Practice Amendment Circular PAC 6/00 of 3 May 2000 was approved [Note: reference should now be made to the Trade Marks Manual, section 20 which provides up to date guidance in this area]. It is a question of fact whether any particular surname alone is sufficiently distinctive to perform the essential function of a trade mark, namely "to guarantee the identity of the origin of the marked product to the consumer or end use by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin": Canon KK v MGM [1998] ECR 1-5507. In this case, as an uncommon surname, the possibility of plural source identification in the course of trade was more theoretical than real and the opposition failed.

Similar issues about the registrability of common surnames were raised in the case of Nichols Plc's Application which resulted in questions being referred to the European Court of Justice by Jacob J.  The ECJ decision in Nichols Plc ([2005] 1 WLR 1418) held that in the case of a surname the assessment of whether or not a trade mark had sufficient distinctive character as required by Art. 3(1)(b) had to be carried out specifically in accordance with the criteria applicable to any sign as required by Art 2 of the Directive and that the presence or absence of distinctiveness depends on the perception of the relevant consumers. There are therefore no black and white rules in this area and the consequence is that very common surnames are likely to continue to be refused. Further guidance is on the Intellectual Property Office’s approach can be found in the Trade Marks Manual (2.4Mb).