Rights to the own name may be transferred

The right to the own name is not often subject to Supreme Court decisions. However, recently the Austrian Supreme Court had to decide on two different cases regarding the assignment of rights to the own name and the interpretation of licence agreements concerning these rights (17 Ob 2/10h, 4 Ob 124/10d).

The cases are based on similar facts. The questions in dispute were whether a third party had the right to use the name of a doctor or a herbal expert, for dietary supplementary products or herbal drugs. In both cases the Supreme Court clearly stated that besides the ideal personal side of the right to a name the right to one's name has also a commercial side which involves the right to use one's name and its own image for commercial purposes (including advertising purposes). Thus, (the commercial side of) rights to one's own name may be assigned to a third party and also to the right to defend the assigned rights against infringements by a third party can be transferred. Although due to the personal aspect the right of one's own name the name as such cannot be transferred to a third party, however, such licence agreements are considered as waiver not to enforce its name right against the party the rights are assigned to.

In both cases the Supreme Court, however, could not finally decide whether the third party lawfully made use of the allegedly assigned name rights as the lower courts did not collect all the necessary facts about the details of the licence agreements. The Supreme Court found that name licence agreements have to be interpreted according to the general rules of Sec 914 et seq. of the Austrian Civil Code. Such licence agreements - as well known from other IP licence agreements - can be restricted to certain purposes, in time, to a specific geographic area, etc.

However, in both cases the scope of rights assigned is not totally clear on the evidence submitted so far by the parties. This makes evident that obviously the contracting parties did not fully consider the boundaries of the assignments of the rights when the rights were (partly) assigned to a third party.

The lesson to be learnt from these two decisions is that - just as in case of any transfer of right - with the assignment of one's own name a thoroughly drafted licence agreement should be set up by a qualified IP counsel such that the scope of the assigned rights is clearly defined in a written contract. This should avoid disputes like they have recently gone up its way to the Austrian Supreme Court at a later stage.

Dr. Rainer Beetz, LL.M.