Special aspects of trademarks – Last name.

Keywords: intellectual property, means of individualization, trademark, trademark registration, trademark - last name, problems with registration of trademarks.

     A trademark is "a sign used for individualization of goods of legal entities or individual entrepreneurs" ["Civil code of the Russian Federation (part four)" dated by 18.12.2006 N 230-FL (as amended on 28.11.2015, with amendments from 30.12.2015) (with amendments and additional inforce dated by 01.01.2016)]. As a trademark you can register a word or phrase, an image, a form of packaging, other designations, and combinations of these elements.

     Is it possible to register last name as trademark? This question is becoming more relevant in Russian and world practice. The answer is that registration of a last name as a trademark is allowed, and this practice is quite common. Thus, although the last name is part of whole name (in the broadest sense),  an application for registration of last name may file not  only individuals (individual entrepreneurs), but legal as well. However, registration of a last name as a trademark has many special aspects and limitations.

     General "legal context" of this question is the following: as the basic principles of civil legislation establishes the principles of good faith of participants of civil legal relations, inadmissibility of deriving any advantage from their own unlawful or bad faith conduct (article 1 of the civil code of the Russian Federation), the inadmissibility of rights abuse (article 10). Article 19 of the civil code of the Russian Federation ("the name of citizen") establishes that "...an individual's Name or its alias may be used with the consent of that person by other persons in their creative work, business or other economic activities in ways that exclude mislead third parties regarding the identity of citizens, as well as eliminating abuse of right in other forms... the Damage caused to a citizen as a result of a violation of his right to the name or alias shall be compensated in accordance with this Code. When you distort the name of a citizen or when a name and / or in the form which affect his honor, diminish the dignity or business reputation, a citizen has the right to demand the correction of reparation for the harm caused, but also compensation for moral damages as well."

      The main limitation with respect to the registration of last name established by paragraph 9 of article 1483 of the civil code of the Russian Federation: "cannot be registered as trademarks the designations identical: ...name (article 19), alias (paragraph 1 of article 1265 and subparagraph 3 of paragraph 1 of article 1315) or derived from them the designation, portrait or facsimile of known in the Russian Federation persons, without the consent of that person or his heir on the date of filing... the Provisions of this paragraph shall also apply in respect of designations similar to the point of confusion with these objects it contains." Also for this issue established by the Civil Code is important the ban on registration of designations cannot be distinguished, and the designations, capable to mislead the consumer concerning the goods or its manufacturer.

    Quite detailed explanations on the specifics of the examination of signs that reproduce or include the last name, contain recommendations adopted by the Rospatent [the Rospatent's Order dated by 23.03.2001 N 39 (as amended dated by 06.07.2001) "On approval of Recommendations on specific issues of examination of the claimed signs"] contains quite detailed explanations on the specifics of the examination of signs that reproduce or include the last name.

     For that matter the provisions of the civil legislation providing the methods, procedure and conditions of restoration by the citizen, and in case of his death – and others (as heirs and other parties) intangible benefits affected by the use of the name and last name of the citizen are very important: this is article 150 of the Сivil code of the Russian Federation (the "Intangible benefits"), according to which "Life and health, dignity of personality, personal inviolability, honor and good name, business reputation, inviolability of private life, inviolability of home, personal and family secret... the name of a citizen, the authorship is inalienable and non-transferable... otherwise... Intangible benefits are protected in accordance with this Code and other laws...if required in the interests of a citizen owned by him intangible benefits can be protected, in particular, by a court of a violation of his personal non-property rights, publication of the court decision on the violation committed, and by the restraint or prohibition of actions infringing or creating a threat of violation of personal non-property rights or infringing or creating a threat of infringement of an intangible benefit. In the cases and pursuant to procedure provided by law, intangible benefits that belonged to the deceased, can protect by other persons."

     Thus, as we can see, the last names in the context of the issue of registering as trademarks can be divided into two groups: those that are not identical to the last names of any known persons and not similar with them, and those that are identical or similar.

      So, if you, not being a "known person" to the filing date of the application and want to register their own last name as a trademark, or any fantasy, fictional last name which is not similar to the last names of known persons and do not raise consumers association with any famous person, you should consider the following points. As confirmed in the Recommendations, the registration of such trademarks may be made, if the designation consisting of the last name or including the last name, has a distinctive character in respect of the claimed goods and services and is not able to mislead the consumer concerning the manufacturer. To have distinctive character, such designation must be not only a proper name, but to have the semantic lexical meaning. The application materials should confirm that the declared last name will be perceived by consumers as a designation of goods or services, and not just as a last name: it may follow from the results of the surveys, written statements of experts, the data on volumes of sales, etc.

     The Recommendations also noted that the inclusion in the designation of the name (with last name) reinforces the distinctiveness of the designation. Last name performing in the original graphical style or the inclusion of the designation other elements, such as images, also contributes to distinctiveness. Last names included in this combined designation registered as a trademark, may not be provided the independent legal protection, which means that it can be used by other persons, including, in their applications for registration of trademarks.

     If the mark is just a last name, which does not have any other significance, the Rospatent under the examination of the application may conclude that it cannot be distinguished. A negative decision can be contributed by the fact how many of applications contain this last name.

     A completely different situation occurs when you want to register a designation that is identical with the last name of the person widely known on the date of filing, or similar designation. The last names of famous people receive acquiring distinctiveness, precisely because of the popularity of their owners and therefore, and by themselves, may be registered as trademarks. As a rule, these are the last names of celebrities from the media, show business, sports, names of writers, composers, etc.

     Restrictions on such registration, primarily, related to the fact that using of someone else's last name may influence to the reputation of a famous person (including persons who are already dead), and may affect personal rights. Therefore, in order to register the last name of the famous person as a trademark, you need to either be a famous person, or you need to obtain the consent of the famous person or his heirs.

     However, the application of these principles in practice leads to numerous difficulties. How to determine whether the person who has this last name is famous, at the date of application filing for trademark registration? Examination under a well-known person typically understands the following: the person, details of whom can be found in open sources, primarily in encyclopedias, reference books, periodicals, radio and television broadcasts, and, increasingly, on the Internet. The fame of already dead persons is confirmed, for example, by the establishment of museums, which has their name, the establishment of monuments, streets and squares, which also has their name, etc.

     Other issues also arise: what to do if several famous persons in their fields have this last name? Who must give consent to use the last name? Such issues are dealt with case-by-case to each specific application for registration of a trademark.

     Thus, if you want to register as a trademark a designation containing the last name, you need to be sure that it possesses distinctiveness and don't lead to consumer confusion. If you are a famous person and register your last name –as a rule, there are no problems as in the case when you register as a trademark the last name of the famous person, who provided the consent. However, if claimed designation is the last name, which not associated with any famous person, to get the legal protection becomes much more difficult (more difficult when the last name is very common). In this regard, we can recommend the following options: to do this the name of the original font, color, add a name, include that last name in the original combined mark as an unprotected element, or to perform any other «manipulation» with the designation to increase its distinctiveness, and, therefore, increase their chances of receiving a positive decision of examination and registration of your trademark.

Olga Plyasunova

Trademark Attorney