When deciding whether a trade mark consisting of a surname is capable of distinguishing the designated goods and/or services of an applicant from those of other traders, it is necessary to first consider the extent to which the trade mark is inherently adapted to distinguish those goods and/or services. The commonness of a surname is an indicator of the extent to which the trade mark is inherently adapted to distinguish the applicant's goods and/or services.

16.1 Searching and research for Surnames

The consideration as to whether a trade mark containing or consisting of a surname is inherently adapted to distinguish is multifaceted however some factors in determining the degree of adaptation include:

If your research indicates that a surname is common or shared by a significant portion of Australians it is more likely that other traders may wish to use the same name in trade, and as such that name is less likely to be inherently adapted to distinguish any one trader's goods or services.

The nature of the goods and/or services must be taken into account, that is whether they are specialised, commonplace or somewhere between these extremes.
- For example, if the surname is common, but the goods are cyclotrons or railway coaches, the likelihood that other persons will need to use the name on those goods is low enough for the trade mark to be considered prima facie capable of distinguishing. On the other hand, if the trade mark is to be applied to more commonplace goods such as clothing or cakes, there is a much greater likelihood that another person would wish to use the same surname on their similar goods and a ground for rejection would be appropriate.

If the surname in the trade mark also has other meanings and associations, these should be considered taking into account their relevance to the application at hand and the level of understanding that consumers and general public may have.
- For example, GREEN is a surname shared by a significant number of Australians and also has well known relevance to and associations with energy efficiency.

Are the goods and/or services claimed easily produced and readily available? Is the market for the goods and/or services highly regulated or strictly licensed?
- For example, pharmaceutical goods are highly regulated and depending on what the pharmaceutical is, it may not be easily produced and/or readily available due to its ingredients and purpose.

Is it common practice in Australia for traders of the particular goods and/or services claimed to use their surname in the normal course of their business or trade?
- For example, it is common in Australia for legal practices to adopt and utilise surnames as part of business names and trade marks.

There are Court and Hearings decisions to assist with determining whether a surname is inherently capable of distinguishing the goods and / or services claimed. Please see:

Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd (1998) FCA 689; 41 IPR 497.
Garrett Electronics Inc (2015) ATMO 48.
Brock Beauty Inc (2016) ATMO 44.
Metropolitan Investment Group Pty Ltd v Autumnpaper Ltd (2016) ATMO 115.
Vectura GmbH (2016) ATMO 77.

The Vectura decision provides a succinct summary of relevant factors to consider at 28.

16.2 Surname only

Surnames, unless they also have a meaning which refers directly to the goods or services in question, always have at least a limited degree of inherent adaptation to distinguish.

16.3 Combination of a surname and other words/additional matter

If a trade mark consists of a surname combined with words that are considered to be descriptive in relation to the particular goods and / or services it is unlikely that it will be sufficiently inherently adapted to distinguish. For example: JONES CAR REPAIRS in relation to motor vehicle repair and maintenance. The surname JONES is common and when taking into account the factors listed at 16.1 there is nothing to suggest that this word would be considered and understood as anything else other than a common surname. The reference to CAR REPAIRS is directly descriptive of the services claimed. The mark as-a-whole would not be prima facie capable of distinguishing the applicant’s services from those of other traders.

When assessing the registrability of a sign which consists of a common surname, consideration must also be given to the way in which the surname is represented. An unusual representation may serve to render it capable of distinguishing where plain type would not.

16.4 Plural or possessive surnames

A word which is not capable of distinguishing because it is a common surname will likewise not be capable of distinguishing in the possessive or plural forms.

If a common surname is applied for in the plural form, and the plural form is an uncommon surname in its own right, a ground for rejection is still appropriate. The plural form of the surname takes precedence over the uncommon surname. For example Scott is a common surname whereas Scotts is a rare surname. A ground for rejection may be applicable for SCOTTS, subject to the factors listed at 16.1, as it is likely to be seen as the plural form of Scott.

A word which appears to be a misspelt surname will be treated in the same way as any other word. A variation in spelling constitutes either a different surname, or a word which is not a surname.

16.5 Word which is both a surname and a geographical name

A word which is both a surname and a geographical name will be assessed against the registrability guidelines for both surnames and geographical names (see paragraph 15 of this Part).

16.6 Word which is both a surname and a descriptive word

A word which is both a surname and a descriptive word should be considered in both contexts. For example, the word TALL, while being an unusual surname, would not be regarded as inherently capable of distinguishing stepladders or clothing for tall people. Similarly, the word SMART has both descriptive and surname significance, and both issues would need to be considered at the time of examination (see paragraph 14.3 of this Part).

16.7 Trade marks consisting of two or more surnames

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. 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. For example, SMITH JOHNSON, SMITH BROWN and BROWN SIMPSON are all combinations which form trade marks which are sufficiently inherently adapted to distinguish.

This applies whether they are words with other meanings or not, or whether the combination has a meaning or not - except, of course, where the meaning is directly descriptive of some characteristic of the goods or services (e.g. SMART LIGHT).

If a trade mark consists of two surnames, where the first of them is also a common given name, for example, SCOTT BENNETT or LEWIS THOMPSON, the combination should be treated as the name of a person rather than as two surnames as this would be its ordinary significance. Some difficulty may be experienced by examiners in identifying common given names in languages that they are not familiar with but which are quite significant in the Australian population, for example, Vietnamese or Chinese given names. Some wider research may need to be undertaken to determine the commonness of such names where examiners feel this may be a possibility.