When Does a Personal Name Become a Barrier to Trademark Registration?

One of the recurring issues in trademark practice is whether the inclusion of a personal name within a trademark is sufficient, by itself, to justify refusal of registration.

The issue becomes particularly important where the name appearing in the trademark is not the name of a third party, but rather a name, surname, professional name, or commonly used designation associated with the trademark applicant himself.

This raises an important legal question:

Does the mere presence of a personal name in a trademark mean that it should be treated as the “name of another person”?

The answer requires a careful reading of the applicable trademark rules and, in particular, the purpose behind provisions prohibiting the registration of the name, surname, image, or emblem of another person without consent.

The Purpose of the “Name of Another Person” Restriction

Trademark laws in the GCC prohibit, in certain circumstances, the registration of a mark containing the name or identifying features of another person without that person’s prior consent.

The purpose of this prohibition is clear.

It is designed to protect individuals from the unauthorized commercial use of their names, identity, or reputation.

The provision should therefore not be understood as creating a blanket prohibition against the registration of every name appearing in a trademark.

The central issue is whether the name actually belongs to another identifiable person whose personal rights may be affected.

In other words, the concept of the “name of another person” should ordinarily involve an identifiable third party, not merely the theoretical possibility that someone else may bear a similar name.

This distinction is critical.

What If the Name Belongs to the Applicant Himself?

A different legal position arises where the name contained in the trademark is genuinely associated with the trademark applicant.

For example, the applicant may use a shortened name, professional designation, family name, or commercially recognised form of his legal name.

The fact that such a name does not correspond word-for-word with the applicant’s full civil name should not automatically mean that it belongs to a third party.

The real inquiry should be factual:

Does the name identify the applicant, or does it identify someone else?

Where official and commercial evidence demonstrates that the name is consistently associated with the applicant and his professional or commercial activities, the rationale for treating it as the “name of another person” becomes considerably weaker.

Exact Identity of Names Is Not Always the Correct Test

A recurring practical problem arises where the name used commercially differs slightly from the full name appearing in official identification documents.

That difference may result from:

• omission of part of a family name;

• use of a commonly known surname;

• use of a professional or commercial name;

• linguistic differences between Arabic and English;

• or the way the individual is publicly known in the market.

A purely literal comparison between the trademark and the applicant’s identity documents may therefore lead to an overly formalistic result.

The more appropriate test is whether there is sufficient evidence demonstrating that the relevant name genuinely refers to the applicant.

Such evidence may include commercial registrations, professional licences, sectoral licences, public records, professional classifications, or longstanding commercial use.

Why the Requirement of Consent Matters

The wording of the prohibition itself helps explain its proper scope.

Where the law requires the consent of the person whose name is used, or the consent of his heirs, this naturally presupposes the existence of an identifiable person from whom consent may actually be obtained.

This supports the argument that the prohibition is aimed at protecting a specific third party, rather than hypothetical or unidentified persons who may happen to share the same name.

A name that is common, shared, or capable of being used by multiple people should therefore not automatically fall within the prohibition merely because another person could theoretically bear the same name.

The Risks of an Overly Broad Interpretation

An expansive interpretation of the rule may produce unintended consequences.

If any slight difference between the name used in a trademark and the applicant’s full official name were enough to trigger refusal, legitimate business owners and professionals could be prevented from registering names by which they are genuinely known in commerce.

Such an approach could effectively introduce a requirement that the trademark must reproduce the applicant’s civil name with complete literal accuracy.

That requirement is not necessarily found in the legislation itself.

More importantly, it could restrict trademark protection in situations where there is no actual third-party right at risk.

The purpose of the prohibition is to prevent misuse of another person’s identity, not to prevent legitimate owners from protecting names that have become associated with their own activities.

Judicial Approach to the Meaning of “Another Person”

Saudi commercial courts have previously addressed the interpretation of the phrase “another person” in this context.

The judicial reasoning reflected in such decisions has emphasized that the protected third party should be an identifiable and existing person, rather than a merely hypothetical individual imagined to have a similar name.

One Saudi commercial judgment stated, in substance, that the person contemplated by the provision must be sufficiently identifiable for consent from that person or his heirs to be meaningful.

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Other judicial reasoning has likewise recognised the legitimacy of protecting family or commercially recognised names where those names have acquired a genuine association with their owners and their commercial activity.

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Evidence Is Often Decisive

In practice, disputes of this kind are highly evidence-dependent.

An applicant relying on a personal or professional name should be prepared to demonstrate a clear connection between that name and his identity or business.

Relevant evidence may include:

• commercial registration records;

• professional licences;

• government-issued permits;

• professional classification certificates;

• historical use of the name in trade;

• advertising and market recognition;

• or public references linking the name to the applicant.

The stronger the evidence of actual and continuous use, the more difficult it becomes to characterise the name as belonging to an unrelated third party.

The Practical Legal Test

The analysis should therefore move away from a purely formal question such as:

“Does the trademark reproduce the applicant’s full official name exactly?”

The better questions are:

Does the name actually refer to the applicant?

Is there an identifiable third party whose personal rights would be affected by registration?

Is there evidence of legitimate professional or commercial use of the name by the applicant?

Would registration create a real conflict with the rights of another identifiable person?

These questions are more consistent with the protective purpose of the law.

Conclusion

The inclusion of a personal name in a trademark does not necessarily mean that the mark contains the “name of another person.”

The legal prohibition should be understood in light of its purpose: protecting identifiable individuals from the unauthorised commercial use of their names and personal identity.

Where the name is genuinely associated with the trademark applicant, has been used lawfully in professional or commercial activity, and does not interfere with the rights of an identifiable third party, a refusal based solely on the assumption that the name belongs to “another person” may require closer legal scrutiny.

The decisive issue is therefore not merely whether the wording of the trademark differs from the applicant’s full legal name.

The more important question is:

Whose name is it in substance?

That distinction can determine whether the provision should apply at all.