The case was referred to the ECJ from the UK, where the Trade Marks Registry generally refuses to register ordinary surnames as trade marks, although the Trade Marks Directive does not stipulate that surnames be treated differently than any other mark.
UK trade mark law states that:
"In judging the capacity of a surname to distinguish the goods or services of one undertaking the Registrar will consider:
a. the commonness of the surname;
b. the number of undertakings engaged in the trade and from whom the goods or services specified in the application can be said to originate.
For this purpose the number of relevant undertakings includes manufacturers, designers and specialist retailers of goods, and providers of services."
The discrepancy with EU law led to a reference to the ECJ. The question for the Court was whether the surname "Nichols" is sufficiently distinctive to be registered as a trade mark.
In August 2000 Nichols plc, best known for its Vimto brand of flavoured fruit cordial, applied for registration of the word "Nichols" in relation to automatic vending machines and products.
The application was granted in respect of the vending machines, but not in respect of the products. The Registry's reason was that Nichols is a very common name. It noted that it appears, with slight variations, 483 times in the London telephone directory.
It also considered that the products – food and drink – form part of a very large market, which means that consumers would not easily be able to identify the products as belonging to Nichols plc. On the other hand the vending machines form part of a specialised market, and could be more easily identified as belonging to Nichols plc.
Nichols appealed to the High Court and the judge stayed his decision pending a ruling from the ECJ. As part of this process Advocate General Ruiz-Jarabo Colomer has now issued his Opinion. The ECJ has eight Advocates General and their opinions tend to be persuasive in the ECJ's final judgments.
According to Colomer, a surname is capable of distinguishing between goods and services of one company and another, but must be "analysed in relation to the specific market concerned." He cautioned that "there is nothing in the Directive to justify treating surnames differently".
Colomer added:
"...any judgment as to the distinctiveness of a surname must observe the same guidelines as those applicable to other types of word marks."
"Consequently, the potential distinctiveness of a surname depends on whether, in relation to the goods or services in respect of which registration is sought, the relevant consumer considers that the sign identifies those of one undertaking rather than those of another. The commonness of the surname is one of the factors which it is appropriate to take into consideration, once more in relation to certain goods or services, although it is not decisive."