A trademark cannot be registered if it contains or consists of something which is meant to be perceived as someone else's distinctive surname, if the use of the mark would disadvantage the bearer of the name and the name clearly does not refer to someone long since deceased.
The purpose of this provision is to adapt the protection for surnames to the protection which is in the Names Act, meaning the protection for a name according to the Trademarks Act should not extend beyond the protection according to the Names Act.
Use of the mark
The protection which is given to a distinctive surname has been linked to the use of the name.
Someone else's surname
In order for a surname to be a hindrance, the name must be borne by someone other than the applicant. According to the older Trademarks Act, a mark was meant to be perceived as someone else's family name if, in Sweden, there were one or more resident, meaning registered, persons who bore a name which was identical to the word in the mark applied for and the applicant could not show authorization to use the name. The protection given according to the Names Act, however, does not limit itself to identical names, rather the trademark must not be easily confused with the surname. The Supreme Court has, for example, decided that Gullmarsstrand is easily confused with Gullmarstrand and that Vänerskog is easily confused with Wänerskog.
In order for an existing surname in Sweden to be a hindrance, it is also required that the name is distinctive. The meaning of the term distinctive should be interpreted in the same way as it is according to the Names Act. According to the Names Act, a surname is distinctive if it is meant to distinguish association to a certain family. Exactly what is required for a name to meet that criterion has not yet been carved out in practice. The Court of Patent Appeals has, among other things, decided that a surname with 71 bearers could not be considered as distinctive.
However, whether a name is distinctive or not cannot be determined based only on the number of bearers. A surname with a large number of bearers can also be distinctive. Even in those cases where the name is associated with only a limited number of families and, thereby, each time it occurs raises the notion of a certain family belonging, the name can be deemed as distinctive.
In order for a hindrance to exist, it is required that the use of the distinctive surname would disadvantage the bearer. By disadvantage it is meant, at the least, that unauthorized use would cause inconvenience in a practical sense. That the bearer of the name wants to be the sole bearer of the name is not enough. Whether the use of a trademark would disadvantage the bearer of the name is, in most cases, not possible for PRV to determine without the bearer of the name highlighting what the disadvantage is. Normally that requires the bearer of the name to oppose and state in what way the use of the mark would disadvantage him/her.
However, there are cases where PRV can decide on its own initiative that the use of a name in a trademark would disadvantage the bearer. An example of when PRV would reject an applied for mark with reference to a surname hindrance is if the mark, in addition to the name, contains something which could be perceived as offensive to be associated with. There is also a disadvantage if the list of goods contains something which could be perceived as offensive or contrary to the law or another regulation.
If the bearer of a distinctive surname is famous, it can also be seen as a disadvantage if someone uses a trademark which contains or consists of the surname and the use relates to such services as the bearer of the name is famous for.