Family name

Etymologically, patronymic comes from the Latin pater, the father. The patronymic is commonly used to designate a person’s family name.

Like the family name, the pseudonym is protected as a personality right.

Thus, in addition to the protection of the family name, “the protection of the property of the pseudonym […] is imposed, when by a notorious and prolonged use, it has become incorporated to the individual who bears it and has become for the public the sign of his personality. This chosen name then becomes an attribute of the personality of the person it distinguishes, without the need for the person’s notoriety to go beyond the environment in which he or she carries out his or her activity, nor for this pseudonym to be original.” (Tribunal de Grande Instance de Paris, November 15, 2017, No. 19-14.769).

Whether it is a family name or a pseudonym, we are dealing with personality rights.

Trademark and surname have frequent interactions.

The patronymic and pseudonym can constitute prior art that can be used against a later trademark

Article L.711-3 of the Intellectual Property Code provides that:

“A trademark that infringes on prior rights effective in France, in particular … may not be validly registered and, if registered, may be declared invalid:

8°A third party’s personality right, in particular to his family name, pseudonym or image;”

Under these conditions, the owner of a patronymic or pseudonym could theoretically oppose a subsequent trademark, provided that he or she can demonstrate :

• A commercial use of his patronymic/pseudonym on the day of the filing of the contested trademark, i.e. that he was exploiting his patronymic/pseudonym in the course of his activities;
• A risk of confusion. The likelihood of confusion will be assessed here with regard to the more or less distinctive character of the surname invoked, the similarity between the surname/pseudonym invoked and the contested later trademark, and the similarity between the activities actually offered under the surname/pseudonym and the product(s) and/or service( s) designated by the contested trademark.

Good faith exploitation of one’s patronymic name

Article L.713-6 of the Intellectual Property Code provides that:

“II. – A trademark shall not entitle its owner to prohibit a third party from using, in the course of trade, a trade name, sign or domain name, of local significance, where such use predates the date of the application for registration of the trademark and is exercised within the limits of the territory in which they are recognized.”

Thus, the owner of a validly registered trademark cannot prevent a person from using his or her own surname in good faith as a trade name, sign or company name, even if it is identical to the trademark in question.

If, in principle, the owner of the trademark cannot prohibit a third party from carrying on a commercial activity under his patronymic name, he may, however, oppose such exploitation if he can establish that the third party In addition, it is important to note that the applicant must have “committed an act of trademark infringement or that there are serious reasons to believe that he is about to commit one” (Cass.com. October 13, 2021, n° 19-20.504).

It is recommended that you hire a specialized lawyer to assist you in the legal protection and defense of your personal rights.

These rights can be found in particular in trademark law and unfair competition litigation.

The specialized lawyer will provide you with his legal expertise and will allow you to act efficiently in order to face the resumption of your patronymic name in business life.

Jurisprudence

In this judicial saga, the Court of Cassation finally considered :

• That the company in which Julien POILANE actually exercises control and management functions had, in good faith, used the surname of its director, so that it was entitled to invoke the homonymity exception provided for in article L.713-6 a) of the Intellectual Property Code;
• The notoriety of the trademark POILANE was not necessarily exclusive of the good faith invoked by the company sued;

However, this does not allow Julien POILANE to use this sign as a trademark, given the existence of a risk of confusion with the previous trademark “Poilâne” (Cass. com., March 17, 2021, n°18-26.388 and 19-16.688).

Jurisprudence

The designer Inès de la Fressange had initially sold to a company of which she was the Artistic Director several of her trademarks bearing her name.

The designer subsequently stopped working for the company and sought to invalidate the assigned trademarks on the grounds that they were misleading to the public. The plaintiff tried to show that since it was no longer the originator of the creations sold under its name, the public, which was justified in believing the contrary, was deceived about the origin of the products.

If this argument was accepted on appeal (Paris Court of Appeal, December 15, 2004, n° 2004-258939), the Court of Cassation considered that Inès de la Fressange could not question the validity of the transferred trademarks since, in law, the seller of a thing must guarantee to its purchaser that he will not try to dispossess him (Cass.com., January 31, 2006, n°05-10116).

In this case, the Court of Cassation therefore did not rule on the misleading nature of the disputed trademarks and issued a general decision based on the principle of good faith of the parties to the contract.

The Bouchara firm assists you in particular in :

• Securing the use of your family name;
• The protection and defense of your personality rights and your distinctive signs;
• The formalities of filing your trademarks before the Offices in France and abroad(INPI for French trademarks, EUIPO for European Union trademarks, etc.) including the follow-up of the registration procedure until the delivery of the title of ownership (Certificate of registration);
• Actions before the Offices and the Courts (opposition proceedings, nullity actions, seizure of goods, infringement actions, unfair competition actions, etc.);
• The contractualization of your intellectual property titles ( assignment contract, license contract, etc.).