Trademarks and Surnames – Part 2

Since our previous article on the issues surrounding surname trademarks (CHOOSING A SURNAME FOR A TRADEMARK: ISSUES AND PRECAUTIONS TO BE TAKEN | Fidal), some new court decisions have highlighted the growing importance of these names in commercial strategies. 

Conveying the expertise associated with a family heritage, surname trademarks occupy a prominent place in the world of luxury goods, conferring substantial commercial value on the family name. 

However, the use of these surnames comes with complex legal challenges, requiring constant vigilance on the part of those involved. 

The following three recent decisions offer significant insight into the issues surrounding this practice, as they clearly illustrate the various legal issues arising from it. 

On 6 January 2023, the Paris Court of Appeal handed down a decision stating that the registration of a trademark including a surname may infringe not only on the rights of the bearers of that surname, but also on the rights of their heirs: "While the right to a name is essentially attached to the person of its holder and in principle expires upon the latter's death, it may also have a patrimonial character that allows it to be monetized for commercial exploitation and passed on to heirs, and that, moreover, the descendants of a deceased person are thus entitled to protect his or her memory, reputation, and ideas." 

The Paris Court of Appeal thus held that "the use of the surname KLEIN, which is both that of the artist and that of his son, a party to the proceedings, who has the same first name and surname as his father, was made without authorization for commercial purposes to designate goods or colors in reference to the artist and in an unjustified manner to designate wall panels or colors.

This unjustified use of the surname KLEIN causes moral damage to Mr. [H] [J] [Y] KLEIN, who is undisputedly acting as the heir of YVES KLEIN."

This decision serves as a reminder of the importance of being particularly cautious when using a widely known surname, even if the use is not made in bad faith.

However, the rights of descendants are not unlimited, particularly when the third party’s use of the surname is intended to honor the cultural heritage of their ancestors. That said, judges remain vigilant to ensure that such use is solely for honorary purposes and does not infringe on the rights of the heirs. 

In a decision dated 9 June 2023, the Paris Regional Court struck a delicate balance between the protection of family names and the right to pay tribute invoked by two associations, highlighting the complexity of the legal issues surrounding the use of these names in commercial activities: "The defendant's use of the name Duchêne for an association paying tribute to the landscape gardeners Henri & Achille Duchêne is not abusive. To the contrary, it appears justified and legitimate given the defendant association's purpose of promoting their work and posterity." 

In this case, the Court rejected the claims of infringement of the surname, considering that the Duchêne association had not committed any fault in paying tribute to the two architects and that it had not infringed the rights of the heir. As the work of Henri and Achille Duchêne had fallen into the public domain, the descendants could not oppose the use of their name, as they had no exclusive rights in this regard. Furthermore, as the surname was not uncommon and its notoriety was limited to a small circle of enthusiasts, its use by the Duchêne association did not damage the heir's reputation. 

On the other hand, the claim of unfair competition raised by the older association against the newer one was upheld. Given the risk of confusion between the two names, the Court required the defendant to change the association’s name so that the names Henri and Achille Duchêne did not appear in the first three terms of its name, thereby reducing the risk of confusion. 

In addition, the judges recognized the fraudulent nature of the trademarks registered by the defendant because "it knew that, prior to the registration, the plaintiff association used signs very similar to the trademarks 'H & A Duchêne', 'Association Duchêne' and 'Journées Henri & Achille Duchêne' for its activities."

Lastly, a ruling by the Colmar Court of Appeal, handed down on 26 October 2022, reaffirms that a family name can be the subject of an agreement and be dissociated from the natural person to become a genuine intangible asset, incorporated into the business. 

In this case, the heirs of the founder of Usines MERGER had brought an action against the assignee of its intangible assets (which included the trademarks and the company name) in the context of its judicial liquidation.

 The heirs argued, in particular, that the use of the MERGER surname gave "the impression that the [MERGER] family was still involved in the company's manufacturing and marketing activities, which constituted an abuse of the name amounting to a deceptive commercial practice, as well as damage to its reputation and honor."  

However, the Court rejected these claims, pointing out "that all the elements comprising the business assets of Usines MERGER – including all the intangible elements of the business, namely the trademarks, trade name and domain names – were assigned to it, including the company name, despite the fact that Usines MERGER retained its legal personality for the purposes of the insolvency proceedings." 

Consequently, the Court ruled that the founder's relatives could no longer legitimately claim entitlement to the commercial use of the name "MERGER," since it had been assigned along with all the other assets of the business. 

The Court points out that "the surname 'MERGER', even when combined with the non-distinctive term 'Usines' linked to the company's activity, was used consistently and with the consent of its founder, even though he was no longer involved in the running of the company, so that, through an implicit transfer, the surname had become a distinctive sign detached from the natural person bearing it so as to apply to the legal entity it distinguishes, and thus became an object of intangible property."
 

These decisions show once again how, due to their dual nature, surname trademarks must be handled with tact and sensitivity. 

They can embody both a complex family history and an intangible asset with high economic value. 

If you are considering acquiring a surname trademark or if you have named your company after your surname, we strongly advise you to take the time to assess the legal situation in order to make the right decisions.  

Article written with the assistance of Nuria Castellvi-Ferrer, intern.