Protection of a famous person’s surname in the light of the European Union trade mark regulation

Abstract

PURPOSE: The main goal of the paper is to analyse the possibilities and rules of management of the protection of a famous person’s surname based on the provisions of the Regulation 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (EUTMR). Moreover, the author aims at exploring whether the general principles of European Union trade marks protection are modified in view of the relation between a trade mark and a famous person in the case of the conflict between a trade mark containing a famous person’s surname and a similar trade mark of another person.

DESIGN/METHODOLOGY/APPROACH: The author analyses and interprets legal provisions of EUTMR and a variety cases concerning the problem of a famous person’s surname protection based on the EUTMR provisions.

FINDINGS: A specific theory of a trade mark neutralization is applied in the case of a conflict between a trade mark containing a famous person’s surname and a similar trade mark of another person. Furthermore, in such a conflict the general rule formulated by the Court of Justice of the European Union (CJEU) in the SABEL case (“the more distinctive the earlier mark, the greater will be the likelihood of confusion”) tends to be modified by CJEU.

PRACTICAL IMPLICATIONS: The paper is addressed to both lawyers dealing with the protection of intangible assets (particularly personal names and trade marks) and managers of famous persons.

ORIGINALITY/VALUE: The article contains a comprehensive analysis of the subject matter. The possibilities and principles of protection of a famous person’s surname on the ground of the EUTMR are discussed in the context of specific cases, including the latest ones, to enable the author to detect the specific approach to the matter that tends to be applied by the courts.