We can all use our own surname as a trademark. However, case law has set certain limitations on the use of one’s surname as a trademark. As a matter of facts, every owner of a surname can prevent someone from using the same surname when this latter is used for commercial exploitation and the likelihood of confusion exists in the mind of the average consumer.
A surname can become a trademark. Everyone can commercially exploit their own surname. But what happens when several people have the same surname?
On the 26th of January 2022, the French Supreme Court (Cour de cassation) delivered a judgment between the « Association des descendants de Gustave Eiffel (ADGE) » and an heir this latter who obtained the autorisation to add the word « Eiffel » to his surname. He was accused of misusing the name and image of Gustave Eiffel purely for commercial purposes. The ADGE then sued said heir for cancellation of its trademarks. Other heirs who have obtained the use of their ancestor’s surname by decree of right, voluntarily intervened to support ADGE.
The validity of a patronymic trademark subject to respect for prior rights
According to article L.711.4 g) from the French Intellectual Property Code, some signs may not be adopted as a trademark if they infringe previous rights, in particular the right of a person to his surname if he was already a bearer at the time of filing of the trademark. Following this article, the Bordeaux Court of Appeal granted the Association’s request. Indeed, the Court of Appeal considered that each of the heirs is entitled to request a cancellation of the trademarks which had been registered after the dates on which they had respectively acquired the right to bear the surname Eiffel, since the commercial exploitation of the trademarks caused them harm.
The trademark owner then appealed to the Court of Cassation. In the first complaint, the trademark owner emphasised the rule that anyone can use their surname as a trademark.
The Court of Cassation supported the reasoning of the Bordeaux Court of Appeal, considering that everyone is free to use their surname as a trademark, but this does not prevent other bearers of the same surname from attempting to cancel the trademark if it infringes their right to the name. On the other hand, the Court of Cassation repealed the application of the Association on the grounds that it did not have sufficient standing to bring an application for cancellation since it does not include all Eiffel’s descendants.
The commercial use of surnames can confuse consumers
During the second complaint, the trademark owner argued that there is no likelihood of confusion in the mind of the average consumer.
The Bordeaux Court of Appeal rejected this argument on the grounds that the owner of a surname must seek the authorisation of the bearers of the same surname when there is a risk of confusion since third parties may legitimately believe that the trademarks are used by one of the bearers of the surname. The Court of Cassation followed this reasoning, stating that the Bordeaux Court of Appeal had compared the disputed trademarks with the surname and that the word « Eiffel », common to all, referred to Gustave Eiffel. For these reasons, the average consumer could legitimately believe that these marks were being used on behalf of all the owners of the patronymic name Eiffel when in fact, they were only being used on behalf of a single descendant.
Through this decision, the Court of Cassation reminds us that the anteriority of a trademark is opposable to all, including the bearer of the patronymic name. The holders of a patronymic name can request the cancellation of a trademark when it infringes their right to the name and when there is a risk of confusion in the mind of the average consumer.