When two is better than one: registering common surnames as trade marks

Trade marks consisting of a combination of ‘common surnames’ are capable of distinguishing. This is true even where the trade mark is a repeated ‘common surname’.

In the recent ATMO decision of Barton & Guestier S.A.S v Anthony Barton [2013] ATMO 95 (12 November 2013), Barton & Guestier S.A.S. opposed registration of application no 1456665 BARTON & BARTON in the name of Mr Anthony Barton, covering various alcoholic beverages in Class 33.

Barton & Guestier relied on its prior mark no 784659, BARTON & GUESTIER, in Class 33. It also sought to establish that BARTON & BARTON lacked sufficient distinctiveness, as it consisted of the duplication of a common surname, ‘BARTON’, which appears on the Australian Surname Database over 4,200 times. The Opponent argued that registration or BARTON & BARTON would allow the applicant to monopolise the common surname ‘Barton’.

The Hearings Officer dismissed the ‘prior mark’ ground given the obvious differences between GUESTIER and BARTON. She noted that GUESTIER was an equally essential element to BARTON in the Applicant’s mark (commenting that it did not appear in the Australian surname database at all). The Hearings Officer considered that consumers would imperfectly recall the Applicant’s mark as BARTON + “a foreign surname” or BARTON + unfamiliar word, as opposed to merely BARTON. She concluded that the marks in issue were sufficiently distinguishable.

The Hearings Officer also spent some time discussing the ‘distinctiveness’ opposition ground that the Opponent sought to establish, where the Opponent’s submissions focussed on the mark in issue being the duplication of a common Australian surname.

She stated that the Australian Trade Marks Manual makes no reference to trade marks that are a repetition of the same surname. There was no evidence that the Examiner had departed from standard practice for marks consisting of two or more surnames. She reproduced the relevant Manual paragraphs, which states (at Part 22, para 17):

Trade marks consisting of two or more surnames are considered capable of distinguishing without the need for evidence, even when the individual surnames are not adapted to distinguish. The reason for this is that the need for other traders to use the combination in relation to the same or similar goods or services is relatively low… Two or more surnames which are not, individually, sufficiently adapted to distinguish an applicant’s designated goods or services, are prima facie capable of distinguishing when they are combined… [E]xcept, of course, where the meaning is directly descriptive of some characteristic of the goods or services (e.g. Smart Light).

The Hearings Officer conducted her own Register search and located relevant examples of marks which consisted of repeated common surnames, and which were accepted without any distinctiveness objection being raised. For example, she identified the following:

  • Trade mark no 1444877 Johnson & Johnson (with Johnson appearing on the Australian Electoral Roll 33,435 times)
  • Trade Mark No 1556757 Galvin & Galvin (with Galvin appearing on the Australian Electoral Roll 1,532 times)
  • Trade Mark No 974856 Jones & Jones (with Jones appearing on the Australian Electoral Roll 56,698 times)The Officer was swayed by Registration No.974856 Jones & Jones, which was accepted on a prima facie basis in relation to Class 33 goods. The Opponent’s arguments based on lack of distinctiveness were also rejected.

The decision confirms that trade marks consisting of common surnames in combination, or repeated within the mark, can distinguish on a prima facie basis – even where the individual elements are non-distinctive on their own.