- The first name or given name is an important component of personality rights and, like the family name or surname, has the function of identifying a physical person in that it enables them to be individualized.
For legal protection purposes, right holders wishing to obtain legal protection may be interested in registering a first name as a name trademark even though the protection conferred by such a sign can be a tricky matter.
The first name, which is considered as a vocable, can constitute a trademark if it appears distinctive and arbitrary in relation to the designated goods or services (see the decisions of the Paris Court of Appeal of 11 and 13 May 2005 concerning the first names “Arthur” and “Lola” to designate clothing (CA Paris, 4thch. A, 11 May 2005, No. 04/05080: JurisData No. 2005-280877; PIBD 2005, III, p. 668 and CA Paris, 4th Ch., Sect. B, 13 May 2005: PIBD 2005, III, p. 477).
It is not indeed uncommon to see trademarks composed of a first name, of which other examples are “Camille et Camille” for cosmetics (see Ccass. com., 10 May 2011, No. 10-10.812: PIBD 2011, No. 943, III, p. 455), and “Lou” for clothing (cf. CA Paris, 19 Sept. 2007, No. 06/13913: PIBD 2008, No. 861, III, p. 644).
If there are any sectors that well-illustrate such a practice, those of fashion and beauty are notably prime examples.
The use of these names is generally supplementary to the umbrella trademark constituted by the House trademark and which, in the fashion or luxury goods industry, very often refers to the name of the founder through their family name, simplified over time to give way to the last name for modernization purposes. First names are often used in commerce to present product ranges launched by Houses, be it for example for ready-to-wear or for leather goods. Some may understand that the choice of such identifiers in fields in which, as a person, the creator, designer, a muse, etc., is intended as a link to the image and universe of the brand.
There are also cases in which the first name, by itself, has become the main sign of identification of the House under which it has forged its reputation and influence across the world. One may cite the French fashion house CELINE, named in reference to its founder, Céline Vipiana who founded it in 1945 and who long remained at its head (see https://www.marieclaire.fr/celine-la-modernite-en-heritage,1324800.asp, https://www.lvmh.fr/les-maisons/mode-maroquinerie/celine/, https://fr.wikipedia.org/wiki/C%C3%A9line_(marque)). Only a few people would know the origin of this name which has clearly eclipsed the surname of the founder in the world of business affairs and in particular as a trademark. This is sufficiently rare to be noted.
- Such a circumstance however would not always appear sufficient to put a stop to junior trademarks coming too close. This is the pitfall which the famous House encountered recently when it failed to obtain the rejection of the French trademark application “Céline Marks” No. 19 4 570 107 in relation to a certain number of goods in classes 3 (including notably “cosmetics and fragrances”, etc.), 9 (including notably “sunglasses”, etc.), 14 (including notably “precious and semi-precious stones, pearls (jewelry)”, etc.) 18 (including notably “imitation leather; imitation animal skins), etc.), on the basis of its earlier French trademark registration “Celine” No. 1460941 (in classes 3, 14, 18 and 25).
In its decision of September 16, 2020, the French IP Office recognized that this opposition was partially well-founded for some of the goods against which the opposition was directed, deemed identical or similar to those of the earlier invoked trademark regarding which the Opponent had proven that its trademark CELINE is well-known in the fashion field, thereby giving it a high level of distinctiveness. In so doing, it stated that “despite certain differences between the signs, it is possible that the relevant public, who knows the earlier trademark CELINE well, would be led to recognize it in the disputed sign which includes the term CELINE in attack and to think that the disputed sign and the earlier trademark are of the same origin” and that “this leads to a risk of association between the two signs in the mind of the public in relation to those goods”.
On the other hand, as regards the goods of the challenged trademark held to be identical or similar to those of the earlier trademark, but in relation to which, according to the French IP Office, the opponent did not show that the consumer had particular knowledge, the opposition was rejected. The French IP Office considered that “the mere presence of the first name CELINE in an attacking position within the challenged sign cannot suffice to create a likelihood of confusion in the mind of the public, both due to the overall differences between the signs and due to distinctive and dominant elements being taken into account.
Despite the contrary argument raised by the House CELINE , not devoid of relevance in our view, the French IP Office was of the opinion that “the term “MARKS” within the disputed sign being directly associated with a first name, it will be perceived by the consumer of the goods at issue as an English-sounding family name and not as a reference to the concept of trademark in French”. This being so, “the contested sign will be perceived by the public of reference as the full designation of a person, in which the term “MARKS” constitutes the essential element as a family name which enables by itself to characterize membership of said family, contrary to the “CELINE” element, perceived as a first name and which merely serves to identify a member of that family”. One may however be surprised that the French IP Office did not take into account the fact “Céline Marks” makes no concrete reference to the family name of a clearly individualized eponymous individual person, whose family name would appear either as the applicant or as the Agent of the trademark at stake. This does not seem to apply in the present case. Can a fanciful name, assuming this the case here, would therefore suffice?
The French IP Office goes on to say that “On account of the overall differences between the conflicting signs and the taking into account of the distinctive and dominant elements, the challenged sign “CÉLINE MARKS” does not constitute the imitation of the earlier trademark “CELINE”; the public is not likely to perceive it as a variant of the earlier trademark for the aforementioned goods for which no knowledge of the earlier trademark has been established.”
Ruling on an appeal filed by the House CELINE against the part rejecting its opposition, the Paris Court of Appeal upheld the decision of the French IP Office in a judgement handed down on 2 July 2021. The judges opine that although the knowledge of the earlier trademark on the market has strengthened its distinctiveness and makes it possible to offset a lack for similarity between the signs, the Opponent has nevertheless proven the reputation of its earlier trademark only for jewelry, leather goods and ready to wear, and has not demonstrated it for the other goods. They moreover considered the that conflicting signs were visually different (i.e. did not have the same structure and the same length) and also different phonetically and intellectually (“CELINE” is a widespread female first name whereas the “Céline Marks” immediately conveys a first name followed by a family name given its construction, i.e. the full set of elements serving for the identification of an individualized physical person”). It follows that the opposition decision cannot be criticized in that it ruled out the existence of any risk of confusion for the latter goods at issue (CA Paris, 2/07/2021, Unit 5, Chamber 2, RG 20/14727, SA CELINE v/ SARL NAVAJO).
The Céline decision can only leave a bitter taste to the owner, whose trademark is composed of a first name, i.e. a vocable which is, prima facie, entirely arbitrary, for which it obtained registration at the end of an examination process before the Office, which granted the registration thereof, and with respect to which this same Office then comes to assess whether or not it is, by its very nature, too common on the market to limit, if necessary, its scope of protection . It is also surprising that the reputation of a long-established and flourishing House such as CELINE did not allow it to oppose this trademark more successfully, especially in relation to the goods of classes 9, 14 and 18.
- More generally, it should be noted that, in the EU at least, depending on which jurisdictions are concerned, the combination of a first name and a family name may or may not be sufficient to avoid a risk of confusion with an identical or closely similar name (depending on the scarcity/commonplace character of the sign, etc.). Variants are sometimes considered as similar, sometimes not. Case law often appears rather inconsistent and uncertain, which is not exactly helpful to right holders when it comes to avoiding legal risks.
By way of example, here are some decisions illustrating French and European case law:
In a decision dated April 9, 2019, the Paris Court of Appeal held, after going through a detailed visual, phonetic and intellectual comparison between the trademarks Joy (the invoked earlier trademark) and Joy Marlone (the challenged junior trademark), “that despite their differences, the signs bear similarity in that they both include the term Joy which is a rare first name in France. Having regard to the identical or similar designated goods (perfumery) and the high level of distinctiveness of the earlier trademark, there is a risk of association between the signs at stake, the consumer of average attention being led, if not to confuse the two trademarks, at least to associate them by attributing to them a common origin” (cf. CA Paris, 9 Apr. 2019, No. 18/14397 : Propr. Industr. 2019, Comm. 46, P. Tréfigny; PIBD 2019, No. 1120, III, p. 348, note by M. Bigoy).
In the same way, the EUIPO found there was a likelihood of confusion between the names EMANUELE (earlier trademark) and (junior trademark), in class 25, in an opposition decision of September 26, 2017, whereby the Office stated in particular that the common name “‘Emanuele’ is not, in the current case, regarded as a common first name in the relevant territory”, i.e. Benelux. In passing, it was also noted that “ surnames have in principle a higher intrinsic value as indicators of the origin of goods or services than first names (on the grounds that the same first names may belong to a great number of people who do have nothing in common, whereas the presence of the same surname may imply the existence of links between them (notably family link)”. (see EUIPO Opposition No. B 2 709 668).
In an opposition decision of July 20, 2017, the EUIPO dismissed however the existence of a likelihood of confusion between the names PETER (the earlier trademark) and PETER ANDRE (the junior trademark), in classes 16, 18 and 25, considering that the position in attack occupied by the common name “Peter” within the disputed sign is not sufficient for a finding of a risk of confusion by the public as to the origin of the goods at stake. The Office held, in this case, that the surname “ANDRE“ within the junior sign had a greater intrinsic distinctive force and thus helped to differentiate the signs taken as a whole (see EUIPO Opposition No B 2 707 084).
The General Court of the European Union was recently called upon to rule in a dispute between the EU trademark application “MILEY CYRUS” (referring to the eponymous American pop artist), filed in classes 9, 16, 28 and 41 and the earlier EUTM protected in classes 9 and 20. Further to a general assessment of the overall impression between the conflicting signs, the judges held that they were different. The principles set out by the European judges in points 32 et seq., in the decision of June 16, 2021, are worth noting:
“it is necessary to recall the case-law according to which the perception of signs composed of a person’s first name and surname may vary from country to country within the European Union. Thus, it cannot be excluded that, in certain Member States, consumers will remember the surname rather than first name when they perceive marks composed of a combination of a first name and a surname, since the perception of such signs may vary from country to country. However, that rule, drawn from experience, should not be applied automatically, without taking account of the specific features of each case. It is always necessary to make a comparison of the marks at issue, considering each as a whole.
Similarly, although it is possible that, in a part of the European Union, surnames have, as a general rule, a more distinctive character than first names, it is necessary, however, to take account of factors specific to the case and, in particular, of the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character), as well as the possible notoriety of the person requesting that his or her first name and surname, taken together, be registered as a trade mark.
Thus, in a composite mark made up with several word elements, a surname does not retain an independent distinctive role in every case solely because it will be perceived as a surname. The finding of such position can only be based on an examination of all the relevant factors of each case.
Thus, in so far as, first, for the English-speaking public [the relevant public in this case], it has not been established that a surname has, in principle, greater distinctiveness than a first name and that the public will not perceive either the first name Miley or the surname Cyrus as common, and, second, the famous singer and actress in question is known by her first name and surname taken together, it must be held that those two elements are equally distinctive and that one cannot therefore be considered dominant over the other. The Board of Appeal therefore erred in finding that the element ‘miley’ within the mark applied for would be perceived as a less dominant element in comparison with the ‘cyrus’ element.”
As regards the comparison between the signs, the judges considered in this case that “the conceptual differences in the present case between the conflicting marks are such as to offset the visual and phonetic similarities”. Indeed, they held that the “MILEY CYRUS” trademark “has a clear and specific semantic content, for the relevant English-speaking public as it refers to a public figure of international reputation, known by most well-informed, reasonably observant and circumspect persons, whereas the earlier mark has no particular semantic meaning.
Furthermore, the reputation of the singer and actress Miley Cyrus is such that it is not plausible to consider that, in the absence of specific evidence to the contrary, the average consumer, confronted with the mark “MILEY CYRUS” designating the goods and services at stake, will disregard the meaning of that sign as referring to the name of the famous singer and actress, and perceive it primarily as a trademark, among others, for such goods and services” (see EU General Court decision (Tenth Chamber), of 16/06/2021, case T‑368/20, Smiley Miley, Inc. v/ EUIPO.
In a dispute between two conflicting first names, the House CHANEL recently succeeded in obtaining rejection of the French trademark application “GABRIELLE“, filed for goods in class 25, on the basis of an identical prior word mark “GABRIELLE” claiming inter alia “perfumes” in Class 3. Both the French IP Office and the Court of Appeal of Aix-en-Provence held that the Opponent had established there exists a diversification of companies in the ready-to-wear and high fashion sectors in the field of perfumes and cosmetics and that such a phenomenon was known to the consumer for the goods considered. Further, considering, the strict identity of the conflicting signs, the Court of Appeal is concluded that there is a likelihood of confusion and therefore confirmed the French IP Office’s decision rejecting the opposed trademark (see CA Aix en Provence, decision of 23/09/2021, Chamber 3-1, No 2021/241, RG No. 20/06088, Madame Catherine S v/ Société CHANEL).
- The lessons to be drawn from the above may be summarized as follows: – to overcome possible difficulties and to be able to claim the acquisition of a certain fame, it would be advisable to deploy considerable marketing and advertising efforts to establish the knowledge and reputation of a first name, used as a trademark, which is common in nature, and on which the owners would consider capitalizing commercially speaking, an exercise which is not always easy in practice .
– for other first names with a less ambitious destiny and whose character is deemed as being ordinary, or even banal, coexistence with other trademarks composed of such a name, among other elements, would then seem more appropriate…
– on the other hand, first names having a degree of originality or rarity and which are less commonly used, should run a lesser risk in terms of enforceability of related rights against third parties.
In short, the first name still rather seems to be the unloved member of the family of personality rights relating to names…
Our Firm remains at your side to assist you in any such matters, whatever your business fields.
Séverine Coest, French IP Attorney and European Trademarks and Industrial Designs Attorney She joined the firm Santarelli in 2006. She advises and assists clients of varied profile, including large French companies, in the management of their IPR portfolios and in the defense of their rights both in France and overseas.