At the end of last year, the Supreme Court (HD) heard an intellectual property case in which the question centred on the cancellation of a number of trade names. Four private individuals with the surname of Bragnum brought an action before the Patent and Market Court requesting that three registered trade names that included “Bragnum” be cancelled because they 1) contained their specifically-protected surname or 2) were liable to mislead the general public.
What does the law say?
According to the Swedish Act on Trade Names Act, a trade name may not be registered if it contains something that can be perceived as another person’s surname if that surname is specifically protected under the Swedish Act on Personal Names. In general, if there are fewer than 2,000 people in Sweden with that surname, it is considered to be specifically protected. One further prerequisite for cancellation is that the use of the company name must involve a disadvantage for the person with that surname. The Swedish Act on Trade Names also states that a trade name may not be registered if it can be perceived as misleading. A trade name that was registered in breach of the Act can be subsequently annulled. Similar rules exist for trademarks, so it is probable that the outcome of this case would have been the same had it concerned trademarks rather than trade names.
The HD’s ruling
Several aspects of the HD’s ruling are interesting. In addition to the fact that the obstacle regarding surnames in the Act on Trade Names seldom arises, it is unusual for the HD to hear intellectual property cases. Since 2016, the Patent and Market Court of Appeal (PMÖD) has mainly been the highest instance in cases with an intellectual property connection. However, in some cases it is possible for the PMÖD to allow an appeal to the HD by opening an "appeal valve". Just such a “valve” was opened in this case, where the PMÖD considered that there were matters of interest for the HD to issue findings on.
After an appeal, the HD granted leave to appeal in the case. Like the PMÖD, the HD considered the surname Bragnum to be specifically protected since there were fewer than 2,000 people in Sweden with that name. The HD also established that Bragnum can be perceived as a person’s surname, since most people in Sweden are not aware that Bragnum is also the name of Swedish geographical locations.
However, the HD considered that the extent of the disadvantages that the appellant claimed to have experienced, including discomfort associated with the business activities of another and the fact that the appellant was unable to register a company name containing the appellant’s own surname in the same industry, was insufficient to fulfil the requisite regarding disadvantage. The fact that Bragnum is also the name of several geographical locations in Sweden also means, according to the court, that a person with that surname may expect a certain risk of misunderstanding.
Nor did the HD consider the trade names to be misleading since they have a particular connection to the place named Bragnum, including the fact that, at times, one of the founders lives on a family farm in that place. The HD also considered that the trade names cannot be perceived as an indication of where the companies’ actual activities are carried on, particularly since the companies operate on the Nordic market. The court therefore concluded that there was no basis for cancelling the trade names in question.
What does this mean?
The HD’s reasoning means that the extent of a disadvantage that the use of a trade name (or trademark) containing a specifically-protected surname means for a person with that surname must be sufficient to constitute a disadvantage within the meaning of the Act. This is particularly true in cases where the specifically-protected surname has a dual function, for example as the name of a geographical location. It is important to consider these issues in the case of trademark and trade name protection and claims for infringement.
Do you have a trademark (or a trade name) you would like help with? You are welcome to contact Lindahl’s experts in intellectual property law and we will help you.