Trademarks and Surnames – Part 1
The use of surnames is common practice in the business world, as illustrated by iconic brands such as Louis Vuitton, Gucci, and McDonald's.
This trend often reflects a desire to highlight family expertise or heritage, associating the family name with a certain prestige. However, this approach is not without its intellectual property constraints. The example of the McDonald brothers, founders of the eponymous fast-food empire, illustrates the challenges and legal and commercial implications of using a family name in business.
Choosing to name your company or brand after your surname has a number of consequences, both for the holder of the name and for their descendants. The French Intellectual Property Code addresses this issue, and the abundant case law on the subject is rife with legal disputes arising from family disagreements that can be quite tricky to grasp.
I. Registering a surname as a trademark
Firstly, it should be noted that it is entirely possible to register one's surname as a trademark. (1) Thus, although a surname is, in principle, considered an inalienable and imprescriptible personal right, the law does not prohibit its trademark registration, as long as it meets the criteria of distinctiveness required by the relevant legislation.
A distinction must therefore be made between two scenarios: (i) where the holder of the surname is not the applicant for the trademark incorporating the name, and (ii) where the holder of the surname is also the trademark applicant.
- The trademark applicant is not the holder of the surname
Anyone is free to register a surname as a trademark. However, the courts are particularly careful to ensure that such a trademark registration does not infringe on the rights of the holders of the surname.
Article L711-3 of the French Intellectual Property Code provides that a surname constitutes prior art that can be invoked against a subsequent trademark.
"I.-A trademark may not be validly registered and, if registered, may be declared invalid, where it infringes on prior rights having effect in France, in particular:
(...) 8° A third party's personality right, in particular to their surname, pseudonym, or image;"
Consequently, bearers of the surname may in theory seek to have the trademark canceled if it infringes on their right to their name. (2)
It was on this basis that the Court of Cassation (French supreme court) upheld the cancellation of several "Eiffel" trademarks.
The judges concluded that the average consumer confronted with these trademarks would not be able to distinguish whether the goods or services offered under the trademarks comprising the name "Eiffel" originated from a descendant of Gustave Eiffel. (3)
Recently, the General Court of the European Union canceled the NEYMAR trademark, which had been registered in bad faith by a businessman for various fashion items, due to the pre-existing notoriety of the soccer player Neymar. (4)
The former Paris District Court had already taken a similar position in a case where an applicant had registered the trademark STALLONE. The court ruled that:
"a trademark consisting of the surname of a third party who is a famous person is invalid. (...) A surname cannot be used to constitute a trademark or any other distinctive sign when it is well known and there is therefore a risk of confusion between the holder of the name and the trademark applicant." (5)
It should be noted, however, that these cancellation decisions have in each case concerned famous surnames. In the case of a surname that does not refer to a celebrity, case law generally considers that, in the absence of any association between the surname and the trademark, no harm is suffered by the holder of the surname. (6)
- The trademark applicant is the individual with the surname
The individual bearing the surname may, naturally, register their surname as a trademark, company name or trade name.
In a unique case, the Court of Cassation ruled that the applicant had obtained the right, by prior decree, to add the surname EIFFEL to his own: he was therefore indeed a bearer of the surname.
Nevertheless, the Court of Cassation upheld the cancellation of several "Eiffel" trademarks.
The judges concluded that the average consumer confronted with these trademarks would not be able to distinguish whether the goods or services offered under the trademarks containing the name "Eiffel" originated from a descendant of Gustave Eiffel. (7)
Article L713-6 of the Intellectual Property Code also authorizes bona fide namesakes to use their surname in a company name, trade name, or brand name.
"I. - A trademark does not allow its owner to prohibit a third party from using, in the course of business, in accordance with fair trade practices:
1° Their surname or address when that third party is a natural person;"
However, the namesake exception gives rise to some complexities in business life. Indeed, it sometimes so happens that trademarks incorporating similar or even identical surnames are forced to coexist, which significantly diminishes the value of the trademark, one of whose major functions is to guarantee a monopoly on a sign.
In the HENRIOT case, the Court of Cassation thus invited the champagnes HENRIOT, SERGE HENRIOT, and RAYMOND HENRIOT to coexist. (8) In support of its decision, the high court noted the good faith use of the names by the various individuals bearing the surname in their activities as wine producers, harvesters, and merchants. In this case, the Court of Appeal had also noted the frequency of namesakes in the Champagne wine region.
In another case in 2022, the Court of Cassation affirmed the principle that the use of a surname for commercial purposes may be legitimate, even if the name is also that of a well-known brand. (9)
The case pitted Virginie Taittinger, a former employee and partner of the Taittinger champagne house, against the latter, which contested her use of her surname in the production of champagne. The judges ruled in favor of Virginie Taittinger, finding that she had legitimate reasons for using her surname and that she was complying with honest commercial practices, particularly since, although she had undertaken not to use the TAITTINGER name as a trademark, she was unambiguously using her surname in conjunction with her first name in the course of her own business to convey information about her family background and professional career. The Court of Cassation therefore upheld this decision, emphasizing that the use of the Taittinger name had a family dimension and highlighted Virginie Taittinger's expertise in the champagne industry.
Thus, the good faith of a natural person who is using a surname identical or similar to a previously registered trademark is established so long as the applicant has not committed any wrongful acts. (10)
On the other hand, the namesake exception cannot apply in cases where the applicant and holder of the surname has acted in bad faith and where there is a risk of confusion in the mind of the consumer between the signs concerned.
The courts have thus ruled that the bearer of a surname cannot register it as a trademark if that surname is already registered and enjoys a reputation attached to goods and services. (11) In that case, the fact that the bearer of the surname usurped the reputation attached to the Rothschild barons created a risk of confusion with the earlier trademarks registered by the Rothschild family. The judges therefore found that there was bad faith.
Sometimes, however, the applicant's good faith is not enough. This was the case for the television presenter Stéphane PLAZA, who was refused registration of his word mark "Plaza Immobilier” (12) due to the existence of an earlier company name, Plaza Immobilier. However, this decision stems from the observation that the term PLAZA appears to be a common noun in the real estate sector, referring to a "square." Since the surname in question had not yet acquired renown when the third-party company began using it, the company could legitimately use it for its business.
II. The use of surnames in business
While in principle a surname is considered an inalienable and imprescriptible personal right, its use in business life can transform it into a genuine element of goodwill.
- The surname: an intangible element of goodwill
The family name may be the subject of an agreement in the course of business. It thereby becomes detached from the natural person to become a genuine intangible asset, a means of attracting customers.
It is interesting to note that a family name which is the subject of a trademark therefore constitutes a prior right enforceable against all, including against the bearers of that family name. (13)
In the Bordas decision, handed down on 12 March 1985, the Commercial Chamber of the Court of Cassation thus affirmed that:
"the principle of the inalienability and imprescriptibility of the surname, which prevents its holder from freely disposing of it to identify another natural person in the same way, does not preclude the conclusion of an agreement on the use of that name as a company name or trade name." (14)
Thus, it is not possible for the holder of a family name who has authorized the registration of their name to subsequently revoke their consent.
In the Ines de la Fressange case, the trademark was duly assigned to the company and became part of its assets, so that the latter was able to invoke the warranty of quiet possession to reject the request of the famous model, who wished to recover the use of her name. (15)
However, it is still necessary to demonstrate that the trademark was registered in the company's name with the consent of the holder of the surname. This was the issue raised in a ruling concerning the surname DUCASSE, handed down on 6 May 2003, by the Commercial Chamber of the Court of Cassation, which noted that:
"the consent given by a founding partner, whose name is well known, to the inclusion of his surname in the name of a company operating in the same field cannot, without his agreement and in the absence of an express or tacit waiver of his property rights, authorize the company to register that surname as a trademark to designate the same goods or services."
Thus, as with any assignment agreement, the general rules of contract law apply.
- Acquiring a surname trademark
Conflicts are seen to arise when either:
- one of the descendants wishes to start their own business under their family name. In this case, the entrepreneur's good faith, the reputation of the family name, and the planned activity will be the determining factors to be analyzed in order to assess the feasibility of such a project; or
- the company bearing the family name is sold to a third party.
The conflict generally arises between the assignor, who wishes to continue operating under their name, and the assignee, who wishes to be able to freely and peacefully enjoy the asset they have acquired.
In the above-cited dispute regarding the "Ines de La Fressange" trademark, it was on the basis of the warranty of quiet possession that the company was able to win its case and retain peaceful enjoyment of the trademark.
More recently, the individual bearing the surname, whose eponymous trademark had been assigned, sued the assignee for revocation of the surname trademark based on deception, on the grounds that the holder of the surname was no longer in the company. This case concerned the trademark ELISABETH EMMANUEL (the surname of the fashion designer who founded the brand).
The Court of Justice of the European Union ruled in favor of the assignee, deciding that "a trademark corresponding to the name of the designer and first manufacturer of the goods bearing that mark may not, by reason of that particular feature alone, be refused registration on the ground that it would mislead the public" (16) and that it is up to the national court to determine whether, "in the presentation of the trade mark ELIZABETH EMMANUEL, there is an intention on the part of the undertaking which lodged the application to register that mark to make the consumer believe that Ms. Emanuel is still the designer of the goods bearing the mark or that she is involved in their design."
It could therefore be considered that case law has, up until now, tended to favor acquirers of surname trademarks.
However, a case recently brought before the Court of Cassation has raised a new issue in connection with a counterclaim filed by Jean-Charles de Castelbajac for revocation of a trademark owned by a third-party company accused of misleading the public. The CJEU will soon have to decide whether a third party’s use of a surname trademark which creates the impression that the individual is still involved in the business constitutes grounds for revocation on the basis of misleading use. (17)
The warranty of quiet possession may no longer be an infallible defense against an action brought by the holder of the surname if the assignee has committed a fault.
In practice, what precautions should be taken when dealing with a surname trademark?
As an applicant, if it is not my own name, it is essential to check previously registered trademarks to ensure that the trademark does not infringe the rights of any third party.
As an applicant, if it is my own surname:
- I am not exempt from conducting prior art searches even if I am already well known in my field. As we have seen above, a family name does not give any priority or immunity with regard to intellectual property rights;
- Is my name well known in a particular sector of activity? The nature of family relationships at the time of filing will have a major impact on the potential risks of conflict. Of course, a written document confirming any consent or authorization will be welcome, as disputes can arise over several generations;
- As a seller or buyer of an undertaking or business bearing a family name trademark, extreme vigilance regarding the terms of the sale is strongly recommended. In light of current case law, it will be particularly important to document the parties’ intentions in order to guard against any unpleasant surprises.
Notes:
(1) Article L711-1 of the French Intellectual Property Code allows any sign to be registered as a trademark, provided that it is distinctive for the goods or services concerned.
(2) Court of Cassation, Commercial, Economic and Financial Chamber, 16 February 2022 – No. 19-20.562
(3) Court of Cassation, Commercial Chamber, 26 January 2022, 19-10.949, Eiffel case: The judges invalidated the trademarks at issue on the grounds that consumers would be led to believe that all the heirs would benefit from the registered trademark.
(4) EGC 14 May 2019, Case No. T-795/17, NEYMAR
(5) Paris District Court, 29 June 1988, Stallone
(6) For illustration: Paris Court of Appeal, 4th Chamber, Section A, 1 March 2006, No. 05/02210 - Sango case, Cass. civ. 1, 10 April 2013, No. 12-14.525, F-P+B+I - Froment-Meurice case, Paris Court of Appeal, Division 5, 1st Chamber, 1 December 2015
(7) Court of Cassation, Commercial Chamber, 26 January 2022, 19-10.949, Eiffel case: The judges invalidated the trademarks at issue on the grounds that consumers would be led to believe that all the heirs would benefit from the registered trademark.
(8) Paris Court of Appeal, 2 June 2010, No. 08/20561, Henriot decision: "It follows from Article L. 713-6 of the Intellectual Property Code that the registration of a trademark does not preclude the use of the same or similar sign as a company name when such use is, in particular, by a third party acting in good faith using their family name. (...) The Court of Appeal therefore legally justified its decision dismissing a trademark infringement action on the grounds that the use of his surname in the corporate name of his company by a person who, as manager, exercises control and management functions and thus identifies himself with his company, thereby showing the absence of any bad faith on the part of the company and its manager, is not open to criticism."
(9) Court of Cassation, Commercial Chamber, 22 June 2022, No. 20-19.025, TAITTINGER case
(10) Court of Cassation, Commercial, Financial and Economic Chamber, 7 September 2022 – No. 21-12.602
(11) Paris, 1st Chamber, Section B, 10 July 1986; Helmut Rothschild et al. v. Rothschild et al.
(12) Paris Court of Appeal, 5, 2, 30 June 2017, No. 16/14737: in a ruling dated 30 June 2017, the Paris Court of Appeal cancelled the registration of the trademark "Plaza immobilier" for services in class 36, filed by Stéphane Plaza, for infringement of a prior corporate name used by a simplified joint-stock company (SAS) "Plaza Immobilier" engaged in real estate development.
(13) INPI opposition decision OPP 13-3367 31/01/2014: The opposition is recognized and justified, and the application for registration is canceled on the grounds of prior use. Heirs of the same family cannot use their own surname as a trademark if it has already been registered for similar goods or services.
(14) Court of Cassation, Commercial Chamber, 12 March 1985, 84-17.163, Bordas case: The surname included in a company’s articles of association signed by the natural person bearing that surname becomes a distinctive sign which is detached from the natural person bearing it and which applies to the legal entity that uses it.
(15) Court of Cassation, Commercial Chamber, 31 January 2006, case no. 05-10116, Ines de La FRESSANGE case
(16) In this regard, see the Elizabeth Emanuel decision (ECJ 30 March 2006, case no. C-259/04)
(17) Court of Cassation, Commercial Chamber, 28 February 2024, FS-B, No. 22-23.833, Castelbajac case
