Surnames as trade marks in the wine industry
It is not uncommon for Australian and New Zealand wine producers to use their name or surname as a trade mark for their wine.
Some examples of surnames used and registered for wine in New Zealand are: Babich, Giesen, Yealands and Mazuran, and in Australia there are McWilliams, Taylors, Penfolds and Byrne to name just a few.
This practice is fairly common overseas as well – consider the French champagne houses such as Bollinger, Veuve Clicquot, Dom Perignon, Moët et Chandon and Louis Roederer which are all named for their founder/s.
In selecting a trade mark, it is prudent to consider if there are likely to be any difficulties in protecting your trade mark. In this article we look at the potential issues to be faced in registering a surname as a trade mark in New Zealand, Australia and the United States of America.
A “name” is included in the definition of a “sign” in the New Zealand Trade Marks Act which means that surnames are potentially registrable as trade marks as long as they are distinctive. That is, that the mark is capable of distinguishing the goods or services of one trader from the same or similar goods or services supplied by other traders. A surname should not be considered any differently than any other category of trade mark. However, a common surname may be problematic as other people with that name may wish to use it as a trade mark.
If the trade mark comprises the name or signature of a living person, then the Commissioner of Trade Marks will require that person’s written consent to the registration of their name as a trade mark.
A “name” is included in the definition of “sign” in the Australian Trade Marks Act, so surnames are also registrable as trade marks in Australia. Surnames are considered to have at least a limited degree of inherent capacity to distinguish, unless they also have a meaning which directly refers to the goods or services.
However, the Australian Registrar of Trade Marks has quite a different practice when considering whether to register a surname as a trade mark. To determine whether the trade mark is “inherently adapted to distinguish” the goods or services the Registrar will consider the commonness of the surname to assess if it is one that other traders are likely to wish to use in the ordinary course of their business.
The commonness of the surname is assessed by a “Search For Australian Surnames” (or SFAS), which is a list of all surnames which occur on the electoral rolls of the Australian states. The search indicates whether a word is a surname and the number of times the surname occurs on the electoral rolls, that is, its “SFAS value”.
The more common the surname, the less inherent adaptation to distinguish it will have. As a general rule, an SFAS value of 750 or more will tend to indicate that the surname is sufficiently common to warrant raising a ground for rejection. However, the nature of the goods and/or services will be taken into account in making this determination. If the goods or services are specialised then the rejection may not be warranted.
If the trade mark comprises the signature of a living person then that person’s consent may be required before the Registrar will allow registration of the trade mark.
A mark that is primarily merely a surname is not registrable on the Principal Registerunless the applicant can show that the mark has in fact become distinctive through use in the marketplace, that is that it has acquired a secondary meaning. A mark that is primarily merely a surname may be registrable on the Supplemental Register.
The question of whether a term is primarily merely a surname depends on the primary, not the secondary, significance of it to the purchasing public. The Trademark Trial and Appeal Board has identified five factors to be considered in making this determination:
i) whether the surname is rare;
ii) whether the term is the surname of anyone connected with the applicant;
iii) whether the term has any recognised meaning other than as a surname;
iv) whether it has the “look and feel” of a surname; and
v) whether the stylisation of lettering is distinctive enough to create a separate commercial impression.
Again, if the trade mark is the name of a living person then the examining attorney may require the written consent of that person.
Examples of surnames or names registered as trade marks for wine in the US are Gallo; Robert Mondavi and Beringer which are all registered on the Principal Register.
While a common practice in the wine industry, the use of a surname as a trade mark may lead to some issues to overcome when registering your trade mark. Also, if the trade mark is the name of an actual person, consideration will have to be given to the use and ownership of that trade mark should that person exit or sell the business.
 The US Trade Mark Register is in two parts. The Principal Register is for marks that have met the threshold of being inherently distinctive while marks on the Supplemental Register are marks that fall short of being inherently distinctive but are capable of distinguishing the goods or services.