In the fashion industry in particular, first names are often used to designate individual models. Some fashion labels have had these names protected and are now issuing rigorous warnings. SAM and FRIDA are particularly prominent at the moment, giving rise to a number of Trademark warnings are.
Can I register first names as a trademark?
There are a number of so-called absolute grounds for refusal. These are reasons that necessarily prevent the registration of a trademark. The most important and most common reason for Refusal of a trademark application is the lack of the necessary distinctive character. Distinctiveness is the ability of a trademark to distinguish the product from products of other companies. It is lacking if the sign describes the product itself or characteristics of the product or is merely promotional.
First names are not subject to this or any other protection barrier. They are therefore generally registrable. Registered trademarks give the trademark owner the exclusive right to use the trademark. In particular, you can exclude third parties from using it. This is usually done by Warning letters to the third party in which the trademark owner demands an injunction and payment of damages as well as reimbursement of the warning costs.
How can I defend myself against first name warnings?
Warned parties often defend themselves with the argument that first names are not suitable to serve as an indication of origin because one would not draw the connection to a specific manufacturer. If that were the case, then the sign would lack any distinctive character. And we have already written that this is the case. In short: If a first name is registered as a trademark, it is assumed to be distinctive and the protection must be respected.
A more target-oriented Defense against the warning letter The objection that the trademark is not being used by the alleged infringer as a trademark is therefore not valid. Trademark law only protects the owner of the trademark against trademark-related use. These are acts of use that are likely to deceive customers or competitors about the origin of a product or service.
This function of origin is impaired if the sign is used to identify the origin from a specific company. This is generally not the case if the sign is merely used as a decorative design element or in a descriptive sense.
A borderline case is when a trademark - especially for textiles - is used purely as a model name. Model names are designations that do not serve to differentiate between different manufacturers, but merely function as order symbols.
In the past, the SAM brand has defended itself against the designation of an item of clothing as a "SAM wool coat". The Frankfurt Regional Court and the Frankfurt Higher Regional Court considered this to be a trademark infringement.
However, the BGH took a different view and made a groundbreaking decision:
If a first name, which is identical to a word mark registered for clothing, is used in an internet offer as a model name for a pair of trousers, this does not constitute use as a trademark, i.e. use impairing the function of origin of the trademark, if the trademark in suit is not a well-known trademark and the order mark is not used in a spatial context with a manufacturer's or umbrella trademark and only in an inconspicuous place in the offer.
However, this does not constitute a carte blanche. The BGH referred the matter back to the Higher Regional Court of Frankfurt with this assessment. This determined that the use of a first name as a model designation depends on the following:
- Eye-catching highlighting of the brand
- Known brand/model name
- Labeling habits in the industry concerned
Impact of the SAM ruling on other sectors
The BGH and the Higher Regional Court of Frankfurt have explained the case very specifically using the example of the textile industry. However, we also see applications in other sectors and beyond first names. There are numerous Warnings issued by Hofpfisterei Munich for the "Sonne" trademark. In our opinion, bakeries use the names of their breads and rolls as mere ordering symbols, even more so than in the textile industry. The "country bread" is not called that because a particular bakery claims exclusivity on the name, but because the customer in the store simply wants to order a "country bread" instead of "the brown one with the floury crust".
Conclusion
The SAM case and the problem of first-name trademarks
The current case concerning the FRIDA trademark once again shows the complexity of the legal situation regarding first names as trademarks. A warning for unauthorized use of a name is only permissible if the name is used as a trademark and can be understood by the consumer as an indication of origin. This was denied in the SAM case.
No all-clear for all first name brands
Despite this ruling, this does not mean that warnings are not to be feared in all comparable cases. The use of first names as trademarks or model designations is subject to numerous factors that must be assessed individually. Therefore, no generally valid statement can be made.
Court decisions as a guide
However, the court findings in the SAM case can serve as a guide for a possible defense strategy in the event of a warning letter. In individual cases, however, the facts of the case must always be examined in detail.
To summarize:
- The use of first names as model designations is possible in principle, but involves legal risks.
- A warning for unauthorized use of a name is only permissible if certain requirements are met.
- In individual cases, the situation must always be examined in detail.
- In the event of a warning, the case law in the SAM case can serve as a guide.
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