Mark your Word II – More on European Trademark Law

You may count me among the lucky, my first name that is. In this edition of “Mark your Word” we are going to deal with first names which have also been submitted for word marks. To be clear, we are again dealing only with EU and German law.

You gather a few of your mates together, perhaps you are planning a stag or hen night, and you want to design some shirts for the occasion. You put the order in and what happens: some of them were rejected because those names have been entered as word marks. Poor John or Sandy (both word marks) would be (hypothetically) shirtless for the occasion. I can completely understand people getting up in arms: “That’s MY name. I can do with it what I want and no one can stop me!”

Yes and no.

After another chat with Sandy from Legal (one of the unlucky whose name is a word mark with classification 25 for textiles), I got an explanation. In these cases, a legal name and a trademark are two legal entities which are standing opposite each other.

My dear friend, John Johnson, certainly has the right to use his first name and surname and can forbid others to use it (except when they share the same name as him). So far, so good.

On the other hand we have the registration of “John” as a trademark (screenshot). If you look even further into the file “John” is also registered as a word mark which is included in the Nice classification 25 (clothing). This trademark owner’s rights must also be observed and protected.

This means that John can have a shirt printed with his name on it. However, John cannot offer designs which include the protected name for sale – neither in his shop, nor on our Marketplace. That would mean that Ricky and Anne could buy a shirt with the print “John” even though that’s not their name and therefore be infringing on trademark. If John were to offer “John” designs to the general public, he would be using the existing trademark to his own advantage, even though it’s his name. This, as we have already learned, can lead to letters from lawyers and high monetary penalties. Therefore – anyone can print their own name on a shirt. We can’t however, offer designs with protected names for sale.

To summarise:

• Anyone can order a shirt with their own name on it.
• Names in designs can only be put up for sale if that person is the trademark holder (or has rights to use the word mark), or if the name is not protected.
• Before you create a design with a first name, you should take a look through the German and European databanks to see whether the name is protected under Nice Classification 25 (clothing). If the name happens to be protected, you could always try to obtain permission from the trademark holder to use the protected word. The contract address can always be found for each registration.