IPA trademark 17.-name-of-a-person — IP Australia Trade Marks Manual of Practice and Procedure – 22.17. Name of a person

When considering whether the name of a person is inherently capable of distinguishing, the factors identified at 22.16 are relevant and need to be taken into account. 17.1 Trade marks consisting of surnames and a given name The addition of a given name significantly reduces the likelihood of someone with that surname wishing to use the name in connection with their goods or services. The name of a person will be considered capable of distinguishing unless (1) the name as a whole is common and (2) the goods and services are commonplace. A trade mark consisting of the name JOHN SMITH in relation to clothing would therefore attract a ground for rejection under section 41 whereas most full names would be considered acceptable. 17.2 Trade marks consisting of surnames and single common initials There is a high likelihood that someone with a common surname will need to use that name in conjunction with a common initial. These combinations are not sufficiently adapted to distinguish an applicant's designated goods or services and will attract a ground for rejection under section 41 . See paragraph 18 of this Part for examples. 17.3 Trade marks consisting of surnames and single uncommon initials However there is comparatively less need for someone to use a common surname in conjunction with an uncommon initial and these combinations are more likely to be capable of distinguishing. See paragraph 18 of this Part for examples. 17.4 Trade marks consisting of surnames and two or more initials The need for a person to use a surname with any two given initials is also far less than the surname on its own or for the surname combined with a more common single initial. These combinations are likely to be considered prima facie capable of distinguishing. See paragraph 18 of this Part for examples. 17.5 The signature of the applicant The signature of an applicant is always registrable. The fact that it is the applicant's signature should be made clear by way of an endorsement to that effect, such as: The trade mark consists of the applicant's signature. Following a query, if it is established that the signature is not that of the applicant , consideration should be given to section 43 which consider whether use of the trade mark in relation to the goods or services is likely to deceive or cause confusion. Part 29 Trade Marks likely to Deceive or Cause Confusion - 4.4 Marks suggesting endorsement, licence or approval However if the person concerned gives their consent for their signature to be used by the applicant then this should also be made clear by way of an endorsement. For example: The signature in this trade mark is that of <> who has consented to its use as a trade mark. If a signature is so legible that it appears to be merely a name in script form, it should be queried in the first instance. If the applicant confirms that it is their signature, then the trade mark will be considered capable of distinguishing. If not, the trade mark will be assessed on its capability to distinguish designated goods or services in the marketplace.