The use of surnames in the business world is common practice, as illustrated by iconic brand names such as Louis Vuitton, Gucci and McDonald’s.

This trend often reflects a desire to highlight a family heritage or know-how, associating the family name with a certain prestige. However, this approach is not without its share of intellectual property constraints.

Choosing to use one’s surname as a company name or trademark has consequences, for both the applicant and his or her descendants. The French Intellectual Property Code has addressed this issue, and the abundant case law on the subject recounts legal conflicts arising against a backdrop of family disagreements that are quite tricky to grasp.

1. Registering a surname as a trademark

If the applicant is not the bearer of the surname

Anyone is free to register a surname as a trademark. However, French case law shows that the courts are particularly careful to ensure that the trademark registration does not infringe the rights of the bearers of the surname.

Article L711-3 of the French Intellectual Property Code stipulates that a surname constitutes a prior right that can be asserted against a subsequent trademark.

“I.-A trademark may not be validly registered and, if registered, may be declared invalid, where it infringes prior rights having effect in France, including:

(…) 8° A third party’s personality right, in particular to his family name, pseudonym or image;”

As a result, the bearers of this name can, in theory, bring an action for cancellation of the trademark if it infringes their right to the name.

It should be noted, however, that each of these cancellation decisions concerned famous surnames (the EIFFEL, STALLONE and NEYMAR cases). Conversely, in cases where the surname does not refer to a celebrity, case law generally considers that, in the absence of an association between the surname and the trademark, no harm is suffered by the bearer of the name (6).

The trademark applicant is the individual bearing the surname

The individual bearing the surname can, of course, register it as a trademark, company name or trade name.

Article L713-6 of the French Intellectual Property Code also authorizes bona fide namesakes to use their surname as part of a company name, trade name or sign.

” I. – A trademark shall not entitle its owner to prohibit a third party from using, in the course of business, in accordance with fair trade practices:

1° his or her surname or address if the third party is a natural person”.

The courts will therefore generally focus on the criterion of the good faith of the individual who uses a surname identical or similar to a previously registered trademark.

However, the courts sometimes go beyond analyzing the good faith criterion. For example, they have ruled that a bearer of the Rothschild surname could not register it as a trademark if the surname is already registered and enjoys a reputation associated with goods and services.

A recent case involving the name KLEIN has also limited the use of a trademark containing this well-known surname, with the aim of protecting heirs.

2. Using the surname in the course of business

The surname: an intangible business asset

A surname can be the subject of a business agreement. It thereby gets detached from the physical person and becomes a genuine intangible asset, an instrument for attracting customers.

It’s interesting to note that when a company registers its founder’s surname as a trademark, with his or her consent, this trademark becomes a prior right that can be asserted even against the bearers of this surname (BORDAS cases – MERGER case).

However, it is still necessary to demonstrate that the company’s registration of the trademark was done with the consent of the bearer of the surname (DUCASSE case).

What do you need to consider before acquiring a surname trademark?

Conflicts tend to arise either:

– when one of the descendants wishes to start his or her own business under the surname.

In such a case, the key factors to be considered in assessing the project’s feasibility will be the entrepreneur’s good faith, the reputation of the family name and the contemplated activity.

– or when the business bearing the surname is sold to a third party.

The conflict then generally arises between the seller, who wishes to continue a business under his or her own name, and the purchaser, who wishes to enjoy free and quiet possession of the assets it has acquired.

The warranty of quiet possession, which protects the purchaser (INES DE LA FRESSANGE case), may no longer suffice, as the surname trademark is increasingly found to be deceptive when the founder is no longer working for the company (ELISABETH EMMANUEL case – JEAN CHARLES DE CASTELBALJAC case).

3. What practical precautions should be taken when dealing with a surname trademark?

 As an applicant:

• if it is not your own name, it’s imperative to check the already registered trademarks to ensure that the trademark does not infringe any third party’s rights
• if it is your own surname:

– you are not relieved from conducting prior rights searches, even if you are already known in your field. In fact, as we have already seen, a surname does not confer any priority or immunity in relation to intellectual property rights;

– is your name well known in the industry? The nature of the family relationships at the time of the filing will have a major bearing on the potential risk of conflict. Of course, a written document confirming any consent or authorization will be welcome, as disputes can arise over several generations;

As the seller or purchaser of a company or business bearing a surname trademark, we can only recommend being extremely careful with regard to the terms and conditions of the transaction.

In the light of current case law, it will be especially important to substantiate the parties’ intentions in order to avoid unpleasant surprises.