Personal names as trademarks: your first name is not always yours

A first name often feels personal and familiar. In trademark law, however, a first name can also function as a distinctive mark and may even develop into a highly reputed brand.

Estée Lauder, Laura Mercier and Charlotte Tilbury, in example, are well-known names in the beauty industry. With beauty brands, the person behind the brand is often also part of its identity. The name then represents not only an individual, but also a particular style, expertise and commercial origin.

It is therefore entirely possible that a particular first name has already been registered as a trademark and that, even though it is your own first name, you cannot register it as a mark. This was recently illustrated by opposition proceedings in the European Union.

The opposition was filed by Anastasia Beverly Hills against a recent Japanese application for the mark ANASTASIA MIARAY for beauty products.

Adding a surname or middle name may create some distance between marks, but it does not automatically mean that the same first name can be registered for similar beauty products. Once the public associates the combination with the established mark, there is a risk of confusion, association or taking unfair advantage of the reputation of the well-known mark.

The European Union Intellectual Property Office (EUIPO) therefore upheld the opposition. Anastasia Beverly Hills was able to demonstrate that its mark was widely known for cosmetics, particularly eyebrow products. Its product range is commonly sold through retailers such as Sephora, Douglas and ICI Paris. According to the EUIPO, ANASTASIA MIARAY would not only evoke an association with the established mark, but would also take unfair advantage of its attractive power. The application was refused in its entirety.

Many personal names have already been registered as trademarks, but particularly in the cosmetics and fashion sectors. Although a personal name can create a strong brand identity, you should not simply assume that it is freely available. A prior trademark search is therefore highly advisable.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.