Brand you

Sonic of the most famous brand names in the world are owed to the names of the founders of the business. Think of Marks & Spencer, McDonalds and even law firms such as Mishcon de
Reya and you have a clear link with their founders.

However, in recent years it has become harder for individuals to register their surname alone with the UK Patent Office. This is partly a result of a move against the practice of celebrities registering their name (as opposed to their signature) to reserve a merchandising field exclusively to themselves. It has also been made difficult by some special tools that the UK Patent Office has used to decide whether a surname in particular is distinctive, which is an essential requirement of a registered trade mark.

A recent decision has led to a change of policy so that marks based on personal names will no longer lie rejected on the basis of too many similar names generally or on the basis of the number of undertakings providing those goods or services, or how common the use of surname is in that particular trade.

For example, the UK Patent Office has often looked at the telephone book or Yellow Pages® to decide whether a name was too common. Now they will rely on the more usual rules applied
to other trade marks.

The one downside of this may be that there is somewhat of a case of first come first served in getting a registered trade mark for a particular name. goods or services. Therefore. any business trading under the name of its founder or current owner ought to consider as soon as possible whether a trade mark application should be back on the agenda and whether it should stake its claim. For further information, please contact:

Conan Chitham
Tel +44(0)2074407110
conan.chitham@mishcon.com