Surname mark (marque patronymique)

A surname mark is a trade mark consisting of the family name of a natural person, alone or with that person’s first name, filed to designate goods or services. A surname is among the signs capable of constituting a trade mark within the meaning of Article L. 711-1 of the French Intellectual Property Code, and its validity requires that the filing does not infringe a third party’s personality rights, which are protected under the relative grounds for refusal in Article L. 711-3 IPC. The subject is dominated by the tension between the name, an attribute of the person, and the trade mark, an asset of the business.

Filing of the name by its bearer or by a third party

Anyone may file their own name as a trade mark, subject to the ordinary conditions of validity, in particular distinctive character, which is lacking where the name is also a descriptive or customary term for the goods concerned. Filing of a surname by a third party is, by contrast, conditional on there being no infringement of the personality rights of the bearer of that name. The Court of Cassation holds that such infringement requires a likelihood of confusion between the bearer of the name and the goods or services designated, which depends on the rarity of the name, the fame of the person and the sector concerned. A very common name may thus be filed by a third party without its namesakes being able to object, whereas the name of a well-known personality remains protected against any unauthorised commercial appropriation.

Detachment of the name from the person

Where the bearer of the name has consented to its use as a trade mark, in particular by contributing it to a company he or she founded or by assigning it, the Court of Cassation holds that the name becomes detached from the person and turns into a distinctive sign, an object of intangible property, which the company continues to own after the founder’s departure. The founder may then no longer use his or her own name for identical or similar goods or services in a manner that would create confusion with the mark. This solution calls for careful drafting of contribution and assignment deeds and of shareholders’ agreements, specifying the extent of the authorisation given, its duration and the fate of the name in the event of separation. Consent given for one activity does not extend to all, and a filing exceeding the authorised scope may be declared invalid or held to be fraudulent.

The limit based on use of one’s own name

Article L. 713-6 IPC provides that a trade mark does not entitle its owner to prohibit a natural person from using his or her family name, provided that such use is in accordance with honest practices in industrial or commercial matters. This limit, which since the 2019 reform no longer benefits legal persons, does not apply where the name is used as a trade mark or in circumstances that create confusion. The court may also restrict or prohibit use of the name where it infringes the rights of the trade mark owner, which often results in an obligation to add the first name and a distinguishing statement.

Key points

A family name may constitute a trade mark, filed by its bearer or with the bearer’s consent, and then becomes an asset detached from the person. Filing by a third party is unlawful only if it creates a likelihood of confusion with the bearer of the name. Before filing a name or founding a company on it, set out in writing the extent of the authorisation of use and provide for the fate of the name on departure, assignment or succession.

---

This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

Intellectual property attorney · Tell us about your situation