Answer:
In some circumstances. Many businesses have a name that contains the founder’s surname. These are often highly effective. Some common surnames that are used as recognisable trade marks include Smith’s chips, McDonald’s, Ford and Levi’s. These popular surnames have become trade marks for the goods they represent.
The General Rule
Trade marks must be capable of distinguishing which business supplies the goods or services. Therefore, when you try to register a trade mark that contains a common surname, another person may object to this on grounds that the trade mark is not distinctive.
The definitive rule is whether the surname appears more than 750 times on the Australian Electoral Roll. If so, the name is not unique in itself. However, a trade mark will not be rejected solely on the basis that it contains or comprises of a surname which appears an arbitrary number of times in the Australian population.
Extensive Market History
Surnames such as McDonald’s appear on the electoral role 20,000 times and Ford 9,900 times. In these cases, the trade marks have been used so often that they have become distinctive.
To determine if this is the case you can ask yourself:
- is the sign accepted by a majority of persons in the relevant field as a trade mark;
- if applied to everyday consumer goods/services, has the trade mark become almost a ‘household sign’;
- has the primary meaning of the sign come to denote your goods or services; and
- is the overall impression given by the trade mark strong enough to distinguish your business?
Registration of a Surname as a Logo
If your name does not have an extensive market history, you can also register your trade mark as a logo. In this case, you would not register the surname by itself, but rather the image of it styled into a logo.
