Trademarks and Surnames – Part 3

Surname trademarks have been the subject of much debate in recent years, particularly due to their dual nature. As both a personal attribute and an economic asset, surnames and their use in business require constant vigilance and a thorough understanding of the legal challenges they may pose. 

As discussed in our previous articles (Trademarks and Surnames Part 1 and Part 2), the use of surnames is common practice in business, giving rise to numerous conflicts, sometimes against a backdrop of family disagreements, which the courts have had to deal with over the years.  

In recent years, the courts have regularly been called upon to rule on disputes arising after a creator has assigned the rights to their name to the eponymous company, which sometimes ends up ousting them. Having introduced the topic in Part 1 through an examination of the Inès de la Fressange case, in this Part 3 we will look at the most recent decisions delineating the legal contours of such assignments, as well as the arguments put forward by creators wishing to carry on their activity while continuing to use their name. 

The reputation of the surname is now a criterion taken into account by IP Offices and courts when assessing the risk of confusion between two signs using the same surname, or the fraudulent intent of an applicant for the contested trademark. This Part 3 will therefore be an opportunity to highlight the issues related to the operation of competing activities by members of the same family. 
 

1. The impact of the surname’s reputation  

On the conceptual comparison. In proceedings opposing the earlier trademark DON LUCIANO to the trademark application LUCIANO SANDRONE in class 33, the IP Office was called upon to compare the signs in question, taking into account in particular their conceptual similarity. 

The issue raised in this opposition was how to carry out a conceptual comparison of trademarks consisting of last names and first names. 

In a decision dated 27 June 2019, the Seventh Chamber of the General Court of the European Union, hearing an appeal against a decision of the European Union Intellectual Property Office (EUIPO), clarified the criteria applicable in the context of the conceptual comparison of signs comprising surnames. 

It distinguishes between two situations. In the first, the first name or surname "does not convey a general and abstract idea" and is lacking any concept; no conceptual comparison is therefore possible. In this case, the mere presence of the first name LUCIANO was deemed insufficient to conclude that there was a likelihood of confusion.

In the second, however, the General Court refers to the scenario where the first name or surname has become the symbol of a concept, either due to "the celebrity of the person carrying that first name or surname, or where that first name or surname has a clear and immediately recognisable semantic content." 

Thus, the Court of Justice of the European Union (CJEU) ruled in a decision of 17 June  2020 (2), opposing the earlier trademark "Massi" to the trademark "Messi," filed by the famous soccer player, that "account must also be taken of the possible reputation of the person requesting that his name be registered as a trademark, since that reputation may clearly have an influence on the relevant public’s perception of the trademark. Mr. Messi Cuccittini’s reputation was a relevant factor in establishing a conceptual difference between the term messi and the term massi." The soccer player’s subsequent registration of the contested trademark was therefore ultimately deemed valid.

It should be noted that this outcome is in line with the Picasso case law (3), according to which conceptual differences neutralize visual and phonetic similarities.

When a first name is added to a well-known surname. In France, the Court of Cassation (the French supreme court) is regularly called upon to rule on the use of a surname by a member of a family in connection with a competing commercial activity. In this context, the reputation of the surname may influence the court's assessment. 

The Petrossian decision, rendered on 10 October 1995 (4), is an illustration of this. Two brothers ran the companies Caviar Petrossian and Saumon Petrossian. The son of one of them, Christian Petrossian, after having been involved in these businesses, was dismissed from his position before registering the trademark "Christian Petrossian." The two companies then sued him for trademark infringement. The Court of Cassation upheld the Court of Appeal's decision, ruling that the distinctive character of the surname Petrossian "retains its own distinctive power" and that "even with the addition of the first name Christian, the Christian Petrossian trademark, used by competing companies marketing caviar, created a risk of confusion allowing the owner of said trademark to benefit from the appeal of a distinctive sign that did not belong to him." Thus, the reputation of the surname Petrossian is sufficient to increase the risk of confusion between the trademark and the company names, even with the addition of the first name Christian. In so ruling, the high court also applied the Bordas case law (5) relating to the use of surnames for commercial purposes (see Trademarks and Surnames, Part 1).

When a surname is used as a company name. A few years before the Petrossian decision, the Paris Court of Appeal had already ruled on the addition of a first name to a well-known surname. In the Poilâne case, which pitted two brothers against each other, each wishing to use their surname for bakery products, the Court of Appeal dismissed Lionel Poilâne's request to cancel the trademark registered by his brother "Max Poilâne," while nonetheless strictly framing its use: the trademark "may only be used with the first name Max on the same line, in the same font, of the same size and color and tone as Poilâne." This solution was subsequently confirmed by the Commercial Chamber (6). 

The high court once again ruled on the subject in a decision dated 17 March 2021 (7), further to a dispute between the Poilâne company and the Julien Poilâne company, which was accused of using the "Julien Poilâne" trademark and of disregarding the conditions set by the Court of Appeal regarding the use of the "Max Poilâne" trademark. The judges thus distinguished between two situations. First, as a company name, the company Julien Poilâne was able to invoke the homonymy defense, as the use of the surname of its director, who "actually exercises control and management functions," was deemed to be in good faith, in accordance with the former Article L.713-6, a) of the French Intellectual Property Code ("IPC") (8). The Court of Cassation confirmed this assessment, specifying further that the reputation of the "Poilâne" surname "did not necessarily preclude the good faith invoked by Julien Poilâne." However, the durability of this position remains to be seen, given the amendment made to Article L.713-6 IPC by the order of 13 November 2019, which replaces “good faith” with the concept of “fair trade practices” and makes the defense available only to natural persons (9).  

On the other hand, with regard to the use of the surname Poilâne as a trademark, the Court of Appeal found that there was a likelihood of confusion between the signs, considering that the signs share "the identical name, ‘Poilâne,’ which is the only element of the earlier trademark and one of the two verbal elements of the contested sign, and that the difference resulting from the addition of the term ‘Julien’ is not such as to mitigate the visual and phonetic similarities thus highlighted, insofar as the name ‘Poilâne’ is distinctive in relation to the goods and services in question and is dominant within the contested sign, in which the term ‘Julien’ appears as a first name relating to the Poilâne family name." 

In light of these decisions, it should be noted that the addition of a first name to a well-known surname has no effect when used as a trademark, with the courts finding that there is a risk of confusion.  

Beyond assessing conceptual similarities, IP Offices are also called upon to rule on claims of invalidity concerning trademarks that include a surname, particularly in cases of bad faith registration.  

On assessing bad faith. Very recently, the French and European Offices have been seized with invalidity claims concerning trademarks that include the surnames of third parties, with the claimants mainly invoking the bad faith of the applicants. 

It should be noted that, under the terms of Articles L.711-2, 11° of the French IPC and 59(1)(b) of the EUTMR (10), a trademark may be invalidated if it was filed in bad faith. According to the CJEU (11), this bad faith presupposes, on the one hand, that "the proprietor of the contested trademark was aware of the prior use of the sign on the date of filing the contested trademark" and, on the other hand, "that the contested filing was made with the intention of depriving others of a sign necessary for their business" (12).

On this basis, in April 2024, the INPI ruled on the French trademark "Cadault cosmetic," whose registration was contested by Viacom, the owner of the rights to the television series "Emily in Paris," which aired two months before the contested trademark was filed (13). Cadault being the name of a secondary character in the series (Pierre Cadault), the claimant relied on the “bad faith registration” argument to support its invalidity claim. Finding that knowledge of the sign by a very large part of the public had not been demonstrated, as the series always presented the character under his full name, combining both first and last names, and considering that the name "Cadault" would not be "immediately associated by the public with the character's surname," the INPI rejected the invalidity claim, as the intention to prevent a third party from using a sign necessary for its business had not been demonstrated. 

The EUIPO, for its part, took a different position in a decision of 2 October 2024 concerning the European trademark "Pierre Cadault" (14). The facts, similar to those assessed by the INPI a few months earlier, were distinguished however by the reproduction of the fictional character's full name. This factor alone led the Office to find that the applicant had acted in bad faith, considering that "due to the reputation of the series 'Emily in Paris' in the European Union, launched in October 2020, the owner must have been aware of the fictional fashion designer 'Pierre Cadault' from the series. (...) The fictional character is not the main character in the series, but the fact that the series is famous is sufficient to presume that there is knowledge of the identical name of a character in the series incorporated into the contested EUTM trademark." The reputation of the series was therefore sufficient to presume knowledge of the name and, therefore, bad faith.

Still on the subject of bad faith registrations, the INPI has recently ruled on the trademark "Pompon" registered by the manager of the museums of the city of Dijon (15). 

The invalidation claim was filed by Dixit Arte, a company that sells works by the artist François Pompon, which argued that the applicant was seeking to restrict the reproduction of the artist's work, even though it had fallen into the public domain. The INPI granted the claim, ruling that by seeking to impose royalties on the use of the surname Pompon, "the owner of the contested trademark sought to divert trademark law from its purpose (...) and thus to hinder the free distribution and marketing of replicas of this artist's works." 

Lastly, the courts are regularly confronted with another type of dispute: those involving a creator who has assigned the rights to their surname to their company and thereafter wishes to continue their activity independently. 


2. When a natural person creator assigns their rights to their name:

Is the assignment indefinite?

It is common today for creators to choose to operate their business under their own name. There are many examples of this practice: Inès de la Fressange, Vivienne Westwood, Balenciaga, Versace, and Stella McCartney. 

However, creators sometimes leave the eponymous company where they worked and, in doing so, assign the rights attached to their name. When they fail   to anticipate the possibility of subsequently resuming their activity as an individual and therefore of using their own name this inevitably leads to disputes between the assignee company and the creator.

This was notably the case with Inès de la Fressange, whose case was already analyzed in Part 1. 

For several years now, creators have been putting forward various arguments before the courts to seek to be allowed to continue using their names in the context of new creative activities. 

Among these cases, the Lacroix decision (16), handed down by the Court of Cassation’s Commercial Chamber on 8 February 2017, deserves special attention. In this case, Mr. Lacroix, a famous designer, had entered into a trademark assignment agreement authorizing the assignee company to use his name for commercial purposes. More specifically, it allowed the Christian Lacroix company to use his name and exempted it from having to obtain authorization for any use of that name, including when registering a new trademark.

After his resignation, however, he continued his activity and entered into a partnership with a furniture distributor. The furniture bore the words "designed by Christian Lacroix," which prompted the assignee company to take action against him. The Court of Appeal, considering that the assignment of the name did not include any term, declared it null and void based on the prohibition against perpetual commitments. However, this ruling was overturned by the Court of Cassation, which pointed out that "a contract for successive performance in which no term is specified is not void but constitutes an agreement of indefinite duration that either party may terminate unilaterally, provided that reasonable notice is given." 

Consequently, in the absence of a term specified in the contract, the assignment of rights is terminable.

The need for balance between the creator's moral rights and trademark rights. 

The assignment of a creator's name raises questions about respect for the creator's moral rights when they wish to sign their new works. This issue was recently brought before the Paris Regional Court (17). Jewelry designer Aurélie Bidermann had assigned to AMS Design all of her surname trademarks under which her works were marketed.

In the same agreement, the designer exclusively assigned her economic rights to her name, thereby authorizing the assignee to use it, in particular as a company name, or to register or extend the protection of trademarks, logos, or domain names incorporating that name.

Following her subsequent collaboration with Massimo Dutti on a jewelry collection, AMS Design brought an action for trademark infringement, as the collection was presented as "created by Aurélie Bidermann." The designer therefore invoked her moral rights, which, in her opinion, allowed her to sign her creations despite the assignment. However, this argument was rejected by the trial court, which weighed the moral rights of the creator against the rights of the trademark owner. Considering that the alleged use consisted in particular of using the name Aurélie Bidermann as a trademark, the court ruled that "while the invoked statutory provisions relating to the author's moral rights recognize the author's right to respect for her name and her work, the search for a fair balance between the interests at stake cannot authorize the exercise of that right in disregard of the rights of the trademark owner and the contractual commitments made to it, a fortiori when, as in the present case, the trademark was assigned by the very person claiming copyright; otherwise, she would be in breach of her warranty obligation of quiet possession towards the assignee."

Conclusion

Surname trademarks are a particularly sensitive legal category, situated at the crossroads of trademark law, contract law, personality rights, and sometimes family disputes. Each situation has its own specific features and involves striking a balance between sometimes contradictory rules in order to allow for a peaceful use of the name, both for the holder and their family and for the assignees.
 

Article written with the assistance of Inès Jaroniak, intern.
 

Notes: 

1. EGC, 7th Chamber, Decision of 27 June 2019, Case No. T-268/18, Luciano Sandrone v. EUIPO
2. CJEU, 17 Sept. 2020, Case C-449/18 P and C-474/18 P, EUIPO v. Lionel Andrés Messi Cuccittini
3. ECJ, 12 Jan. 2006, Case C-361/04 P, Picaro v. Picasso
4. Court of Cassation, Commercial Chamber, 13 June 1995, 93-14.785
5. Court of Cassation, Commercial Chamber, 12 March 1985, 84-17.163
6. Paris Court of Appeal, 9 Dec. 1992, and Com., 13 June 1995, 93-15.084
7. Cass. Com, 17 March  2021, No. 18-26.388
8. In its wording prior to the 2019 transposition order, applicable to this case. 
9. La confusion des boulangers: l’affaire "Poilâne" et l’exception d’homonymie – Julie Groffe-Charrier – Dalloz IP/IT 2021. 459
10. European Union Trade Mark Regulation (EUTMR)
11. CJEU, 29 January 2020, SKY, C 371/18, §75 and CJEU, 11 June 2009, LINDT GOLDHASE, C-529/07
12. Referenced by the INPI, 13 September 2024, NL 23-0183
13. NL 23-0159, 29 April 2024, INPI, Cadault cosmetic
14. EUIPO, 2 October  2024, No. C 64 100
15. INPI, NL 23-0183 13 Sept. 2024, Pompon
16. Court of Cassation, Commercial Chamber, 8 February 2017 – No. 14-28.232
17. Paris Regional Court, 19 Sept. 2025, No. 21/00963