NLO Fortify no. 5 2017
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no. 5 | volume 4 | winter 2017

A (sur)name as trademark

Author: Bart ten Doeschate

Many famous trademarks are named after their founders. Take Philips, Fokker and Hilton, for example: all people’s names which have become strong trademarks. Want to register a surname as trademark? Take the following into consideration:

Distinctive character

In general, names can be registered as a trademark as long as the name has a distinc-tive character. Thus the name ‘Baker’ for bakeries would not be accepted, although it would be a suitable trademark for bicycles. When considering whether a name has a dis-tinctive character, it is not necessary to take into account how many people have that name, the number of companies operating in the sector, or the extent to which it is usual to use family names in the sector.

Right to use own name

Once a name has been registered as a trademark, this can restrict other bearers of the name from using it as a trademark name. For example, someone called Philips may not start a bulb trademark under this name. However, the name may be used on a business card. Everyone is entitled to use his or her own (sur)name, even if the name is registered as a trademark. But remember, when using a name which is registered as a trademark, the impression may not be given that there is a commercial connection between the user of that name and the trademark holder.


Using your own name as trademark can also have disadvantages. For example, the sale of the trademark may have consequences for the further use of the name. Although agreements may be reached on this, the person who gave his name to the trademark may no longer use this name as a trademark. The fact that this can have annoying consequences was experienced by John McAfee, the founder of the successful virus scanner trademark of the same name. After the trademark was sold to Intel, Intel objected to a new IT-related company that McAfee wanted to start under his own surname. Intel went to court in the US to prevent McAfee linking his name to the new company.

EU Commission Notice against patentability of plants does not affect European plant patents

author: bart swinkels

3 November 2016 the EU Commission issued a Notice regarding the patentability of plants/animals obtained by means of essentially biological processes.

In the view of the Commission: “the EU legislator’s intention when adopting Directive 98/44/EC was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes”.

The EU Commission’s Notice is however not legally binding. Indeed it is not up to the Commission but rather for the Courts or Boards to interpret the law.

In any event the EU Commission has no legislative or other power over the European Patent Convention (EPC), which governs the granting of European Patents, including for non-EU countries such as Norway, Switzerland or Turkey. The Commission’s Notice therefore does not have any effect on patentability of plants or animals obtained by means of essentially biological processes under the EPC.

European Patents on plants or animals obtained by such conventional breeding methods have always been and remain possible despite the Commission’s Notice, which also should not effect the validity of such EP patents in national Courts of EPC countries.