Nichols Plc v Registrar of Trade Marks

Date

15 January 2004

Legislation

Articles 3(1)(b) and 6(1)(a) of Directive 89/104/EEC ("Trade Mark Directive")

Keywords

registration of surnames as trade marks; invalidity

Counsel

C Morcom Q.C. for the Applicant, D Alexander and P Ormond for the UK Government

Solicitors

DLA (Manchester) for the Applicant

Judges

President of Chamber CWA Timmermans; Judges – C Gulmann, J-P Puissochet, R Schingten and N Colneric; A-G – General D Ruiz-Jarabo Coloner

Court

European Court of Justice (2nd Chamber)

Reported

[2005] 1 W.L.R. 1418; [2005] All E.R. (EC) 1; [2005] E.T.M.R. 21; [2005] R.P.C. 12; [2005] C.E.C. 160.

Summary

Article 3 is headed "Grounds for refusal or invalidity" and states:

"(1) The filing shall not be registered or if registered shall be liable to be declared invalid:

• signs which cannot constitute a trade mark;
  
• trade marks which are devoid of any distinctive character…"

Article 6 is headed "Limitation of effects of a trade mark" and states:

"(1) The trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:

• his own name or address…. Provided that he uses them in accordance with honest practices in industrial or commercial matters."

The Applicant had applied to register the surname "Nicholls" for products including vending machines and food and drinks of the type sold in vending machines. The application was refused for food and drinks on the basis that the phonetic equivalent of Nicholls "Nichols" and the singular form Nichol was a common name within the UK. as a result of the number of times in which it appeared in the phone directory.

Due to the size of the market for such food and drinks the mark was not capable of distinguishing the origin of the goods. However, given that the market for vending machines was much smaller and more specific the application was allowed to proceed in relation to this specification. The Applicant appealed to the High Court who referred various questions to the ECJ for a preliminary ruling under Art 234 EC.

Decision:

• Article 2 of the Trade Mark Directive contains a list of signs which may be registered as a trade mark. The list expressly includes "personal names". Therefore, a surname is capable of constituting trade mark
• According to Art 3(1)(b) the distinctive character of a trade mark must be assessed according to the goods or services in respect of which the registration is applied for and in relation to the perception of the average consumer of those goods / services. The provision draws no distinction between the different categories of trade mark and therefore applications to register surnames as trade marks no matter how common the name may be should not be treated any differently from other applications and the same criteria applies.
• The registration of a trade mark constituted of a surname cannot be refused simply in order to ensure that no advantage is afforded to the First Applicant. And the Trade Mark Directive contains no provision to that effect
• Article 6(1)(b) cannot be taken into account for the purposes of assessing the distinctive character of a trade mark, it only affects rights granted after registration and therefore after the mark’s distinctive character has been established.