18. Summary of examination practice in relation to names

Date Published


Type of Name

Practice

Common surname

  • SMITH (SFAS 114997)

  • NGUYEN (SFAS 29798)

  • BROOKES (SFAS 1587)

Ground for rejection - Yes - although if goods or services are very specialised and surname is not extremely common, mark may be considered prima facie capable of distinguishing.

Common surnames with other well-known meanings

  • WOOD (SFAS 18248)

Ground for rejection - Depends on circumstances

In most cases the fact that a trade mark has another meaning will not provide a rationale for prima facie acceptance (e.g. WOOD will attract a ground for rejection).

However may be considered prima facie capable of distinguishing in cases where:

  • the SFAS occurrence is at the lower end of what would be considered "common"

  • the trade mark does not present as a surname

  • there is a history of such marks being accepted without evidence

  • goods/services are specialised

Common surname and common single initial

  • C. BROOKES

Ground for rejection - Yes

The need for other traders to use a common surname with a common initial is less than for the surname on its own but not enough to allow for prima facie acceptance.

Common surname and uncommon single initial

  • X. BROOKES

Ground for rejection - No

It is rare for first names to begin with X and therefore unlikely another trader will need to use X. BROOKES

Common surname and two initials

  • B.J. BROOKES

Ground for rejection - No

The possibility of another trader wanting to use a specific combination of two initials even with a common surname is considerably less than for the surname on its own or with a single, common initial.

Uncommon surname with or without initials


Ground for rejection - No

Full names of persons

  • JOHN SMITH



  • SUE JONES



  • BILL WONG


  • GEORGE BROOKES




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Ground for rejection - Yes – although if goods/services are specialised and surname is not extremely common, trade mark may be considered prima facie capable of distinguishing.


Ground for rejection – Yes- although if goods or services are specialized and surname is not extremely common, trade mark may be considered prima facie capable of distinguishing.


Ground for rejection may exist, depending upon nature of goods or services.


Ground for rejection – only in rare circumstances

Acceptable unless name as a whole is extremely common and the goods/services are also commonplace e.g. JOHN SMITH for clothing would require a ground for rejection.