28.3.2003
Registrability of surnames, personal names,
signatures and images of individuals
Registrability of surnames and personal names
Personal names are registrable as trade marks if they have distinctive character.
Because surnames are naturally used to identify individuals, one could argue that they
must necessarily have distinctive character as trade marks. However, the more
common the surname, the more individuals it identifies and as a result, the less
capacity it has to distinguish as a trade mark.
Although common surnames are considered devoid of any distinctive character, they
may still be registered as trade marks if they have in fact acquired distinctive
character as a result of use (section 11(2)). To show acquired distinctive character,
the applicant must file evidence of use of the mark. (See Section 11(2) – acquired
distinctiveness in chapter on Absolute grounds for refusal.)
Full names (combining a forename or given name and the surname) on the whole
have more capacity to distinguish than surnames and are registrable without evidence.
The exception is where the full name is very common and the number of traders in the
relevant trade is large. In that case the capacity of the full name to distinguish
diminishes as it can be used to identify many traders, e.g. Peter Brown for shoes,
where Peter is a common forename and Brown is a surname with more than 100
entries. For the same reason, extremely common Chinese personal names such as
“陳國強” and “何美玲” for garments and knitwear can only be registrable on
evidence.
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Common surnames devoid of distinctive character
In determining whether a surname has distinctive character, we consider how
common it is in Hong Kong. To do so, we search in the major telephone directories
listing major subscribers. Using the telephone directory as a guide is consistent with
principles established in case law.
Our practice is to accept a surname for registration if it appears no more than 100
times in the Hong Kong Telephone Directory. If there are more than 100 entries of
the name in the directory, the applicant must file evidence of use of the name as a
trade mark to show that it has in fact acquired distinctive character.
Examples
ƒ
查 (17 entries) registrable without evidence
ƒ
于 (117 entries) registrable on evidence only
ƒ
KNIGHT (26 entries) registrable without evidence
ƒ
WILSON (131 entries) registrable on evidence only
The possessive and plural forms of a common surname are treated like the surname
itself, and are registrable only on evidence.
Examples
ƒ
SMITH (168 entries), SMITH’S and SMITHS registrable only on evidence
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Common surnames combined with initials, are treated like the surname itself, and are
registrable only on evidence.
Examples
ƒ
SMITH (168 entries), F. SMITH and F. E. SMITH registrable only on
evidence
Two or more surnames
A mark that consists of two or more surnames can be accepted for registration,
without the need for evidence, if any one name appears no more than 100 times in the
Hong Kong Telephone Directory.
Examples
ƒ
許柴 (許 >1,000 entries and 柴 9 entries) registrable without evidence
ƒ
康明 (康 201-500 entries and 明 56 entries) registrable without evidence
ƒ
章樂 (章 164 entries and 樂 73 entries) registrable without evidence
ƒ
Hall Harrison Smith (Hall 64 entries, Harrison 32 entries and Smith 168
entries) registrable without evidence
ƒ
Hall Smith (Hall 64 entries and Smith 168 entries) registrable without
evidence
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If a mark gives the impression of being a full name, rather than two or more surnames,
it can be accepted for registration provided that it is not a common full name (see
Registrability of surnames and personal names above).
Example
ƒ
蘇 石 ( 蘇 >1,000 entries and 石 501 – 1,000 entries) acceptable for
registration
Surnames with other meanings
A word that is a common surname may, apart from being a surname, have another
meaning. If the first impression of the mark, in relation to its goods and services
displaces the role of the surname, or if the word refers in an imaginative way to the
nature of the goods or services in question, the mark can be registered without
evidence.
Examples
ƒ
KING is both a surname and a sovereign ruler. If the trade mark is KING (or
KING COMPUTER for computers), we will refuse registration on the ground
that KING (201 – 500 entries) is a common surname and is devoid of any
distinctive character. But if KING is part of a composite mark that includes
an image of a king or crown jewels, we cannot refuse registration on that
ground.
For the same reason, we would not refuse the following marks on the ground that they
are common surnames :
ƒ
藍石 (藍 201 – 500 entries and 石 501 – 1,000 entries) (meaning “blue
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rock”)
ƒ
金龍 (金 201 – 500 entries and 龍 201 – 500 entries) (meaning “golden
dragon”)
ƒ
黃葉 (黃 >1,000 entries and 葉 >1,000 entries) (meaning “yellow leaf”)
ƒ
麥田 (麥 >1,000 entries and 田 101 – 200 entries) (meaning “wheat field”)
But we would refuse :
ƒ
謝謝 (謝 >1,000 entries) (meaning “thank you”) not on the ground that 謝
is a surname but because “thank you” is devoid of distinctive character.
See also Mister Long Trade Mark [1998] RPC 401 where the mark was accepted, for
conspicuously long ice creams, water ices and frozen confections, on the ground that
when it was used in relation to these goods, the mark would not be seen as referring to
someone with the surname “Long”.
The test is whether the word is more likely to be understood, in relation to the
particular goods or services, in its general, better-known meaning(s) than as the
surname. If it is a surname, it would be devoid of distinctive character. If it has a
better-known meaning, this meaning must be assessed against the restrictions in
section 11(1)(b) to (d). While we will not raise undue objections, it is important to
keep in mind that a common surname should not be accepted, simply on the basis that
it has another meaning or can be understood to mean something other than the
surname. That other meaning has to be so common and readily apparent as to
displace the role of the surname for the word to be acceptable as a trade mark.
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Chinese characters
We treat surnames in simplified Chinese characters in the same way as surnames in
traditional Chinese characters.
Example
ƒ
羅 the simplified Chinese character for 羅 (>1,000 entries) should be refused
Transliterated surnames and personal names
Transliterated Chinese surnames or personal names are generally treated in the same
way as the surname or personal name in Chinese characters.
Examples
ƒ
Chan (陳 >1,000 entries) is not registrable
ƒ
Zhao (趙 >1,000 entries) is not registrable
ƒ
Lam (林 >1,000 entries) is not registrable
But a word that is a transliteration of a Chinese surname may not always call the
surname itself to mind. A decision to accept or refuse a mark must also take
linguistic use and context into account.
Examples
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ƒ
SUN SYSTEMS (孫 >1,000 entries) is registrable because “sun” is likely to
call to mind the sun in the solar system, not the surname 孫
ƒ
ULTIMATE SIN (冼 >1,000 entries) is registrable because “sin” is likely to
call to mind a transgression, not the surname 冼
Names and images of famous people
Applications to register the name or image of a famous person or well-known
organisation can be made by that person or organisation, or with their consent in
writing. If it is not made by that person or organisation, or is not made with their
written consent, we must refuse the application on grounds of bad faith (section
11(5)(b)).
In an application to register the name or image of someone who has died recently,
consent must be given by the personal representatives (executors or administrators) or
by the successor to the business.
Apart from the authority to apply, the name or image of a famous person must be
“capable of distinguishing”, that is, it must be capable of functioning as a badge of
trade origin. The test is whether the name or image is likely to be taken as an
indication that the goods or services have come from a particular source, or are
provided by or with the authorisation of, the famous person, or if the use of the name
in relation to the goods or services will merely be seen as a commemoration of that
famous person.
If the mark is used merely as a commemoration of a famous person, it is unlikely to
be seen as a trade mark. See Elvis Presley Trade Marks [1999] RPC 567, where the
marks ELVIS and ELVIS PRESLEY were refused, as members of the public
purchased Elvis Presley merchandise not because it came from a particular source, but
because it carried the name or image of Elvis Presley.
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If a well known person’s name is likely to result in a demand for memorabilia, the
general public are unlikely to see that name as anything other than an indication of the
content or character of goods, rather than as an indication of trade origin.
Applicants have to file evidence to show that the name or image of the famous person
has a connection with the applicant, as it is wrong to assume that only a celebrity, or
his successor, would ever market his own character (see Elvis Presley, supra).
Other factors that affect the question of whether a famous person’s name or image
indicates trade origin include the following (although not all these factors will be
relevant in every case):
ƒ
the nature and extent of the individual’s reputation;
ƒ
whether any trade in souvenirs has developed, and the reasons for this;
ƒ
whether the famous person or individual has established any trade mark rights
during his or her lifetime;
ƒ
whether descendants or trustees have established any rights and the nature of
those rights;
ƒ
the extent to which demand for commercial consumer items is generated by
the media or the public interest; and
ƒ
the nature of the goods in respect of which registration was sought.
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(See Jane Austen Trade Mark [2000] RPC 879 at 886). Applying these
considerations in relation to JANE AUSTEN, the mark was found to be incapable of
serving as a badge of origin, in respect of a line of toiletry items.
To take another example, an application for the name ALEXANDER GRAHAM
BELL in respect of “charitable collections, financial grant services, charitable fund
raising services for the preservation and rehabilitation of sites, artefacts, and papers
reflecting the scientific and historical heritage of Alexander Graham Bell” would, in
the absence of evidence of distinctiveness, merely be taken as an indication of the
nature of the services to be provided under the mark. Because of the historic
reputation of the inventor, the use of his name would be seen as descriptive of
activities promoting his work and his scientific and historical significance, not as
indication of the trade origin of the services.
It is important to make the distinction between names of persons and names of
organisations associated with certain goods or services. DIANA, PRINCESS OF
WALES was refused registration in the United Kingdom but PRINCESS DIANA
MEMORIAL FUND was accepted. The latter mark presents itself as the name of an
undertaking responsible for the particular charitable fund raising services named in
the specification. It is source-specific and indicates a trade connection rather than a
characteristic of the goods (see Diana, Princess of Wales Trade Mark [2002] ETMR
254 and Diana, Princess of Wales Memorial Fund Trade Mark (UK Registry, 25
January 2002).
Famous person actually trading
On the other hand, if the person actually trades in the goods or services of the
application, the mark is likely to be able to indicate trade origin (see LINDA
McCARTNEY registered in classes 29, 30 and 31 in Hong Kong, registration
nos.6214/99, 6215/99 and 6216/99).
Name of fictitious character
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The name or image of a famous fictitious character is likely to be able to indicate
trade origin where the applicant who owns the copyright in drawings of the character
is in the business of licensing the use of the copyright in the drawings. In other
words, where one is trading in the use of fictitious characters and their names. See
Mirage Studios v Counter-Feat Clothing [1991] FSR 145 at 159, where the court
found that the public would expect goods bearing the Ninja Turtles characters to be
marketed by the copyright owner or by a person under the owner’s control.
Name of author
Just because the applicant owns the copyright to literary works and is the author of the
works does not mean that the name of the author may be registered. As a matter of
policy, if there is an overlap in intellectual property protection, such as trade mark
rights which may be perpetual and copyright which is finite, it is contradictory to
grant trade mark rights if this will have the effect of prolonging the monopoly after
copyright in the work has expired.
More importantly, since other traders might wish to use the work after expiry of the
copyright, as indeed they will be entitled to do after expiry of the copyright, the
granting of trade mark rights in the author’s name will hinder this possibility.
Objection to registration will be appropriate under section 11(1)(c) and/or (b). See
Jane Austen Trade Mark [2000] RPC 879.
Signatures
An application to register a person’s signature can be made by that person, or with his
consent, in writing, permitting the applicant to make the application (see Names and
images of famous people above). If it is not made by that person, or with his consent
in writing, or if authenticity of the signature is an issue, we must refuse the
application on grounds of bad faith.
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Signatures are generally considered distinctive and are registrable prima facie (Elvis
Presley, supra) as long as there are no difficulties with regard to consent or
authenticity. The same considerations apply for signatures in Chinese characters.
However, a name in perfect script that is indistinguishable from an ordinary typeface
is not a signature. It is treated in the same way as surnames and personal names (see
above). Therefore, if a common surname, whether presented on its own or combined
with initials, is presented in perfect script, it is devoid of any distinctive character and
may only be registrable upon evidence of distinctiveness. A full name presented in
perfect script is registrable without evidence, provided that it is not a very common
full name (see Registrability of surnames and personal names above).
For questions regarding a signature mark conflicting with an earlier mark, see Elvis
Presley at 595, where the signature “Elvis A Presley” and the mark “Elvisly Yours”
shared a cursive script and were considered confusingly similar. If looking into the
similarity of marks, the similarity of goods or services, and the distinctiveness of
marks and their likelihood for confusion, see chapter on Relative grounds for refusal.
Because signatures qualify for trade mark registration in view of their unique
representation, a disclaimer of exclusive rights for the name in plain form is not
necessary.
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