What’s in a name? Well, quite a lot really
Lucy Walker, Chartered Trade Mark Attorney and Partner at intellectual property experts Barker Brettell, agrees that trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands.
Personal name
A personal name of a designer is the ultimate symbol of identity; as the designer builds up their reputation in the industry, they often do so under their own personal name. Their name becomes their brand.
If your name is valuable, or has the potential to be valuable, it is often not the case that your name has trade mark protection simply because it is your name. You should also think about protecting it as a trade mark. But before you do this, you should think carefully about whether you want your brand to be your personal name, as this can cause problems later down the line.
IP rights in the brand
Even though the brand may be your personal name, IP rights in the brand are often owned by the business which is responsible for the day to day running of the company. Therefore, if you part ways with that business, you may find yourself in a situation where you are prevented from trading under your own personal name; in effect you can be stripped of your identity.
In 2016 UK fashion designer Karen Millen illustrated the potential problems with using one’s own name as their brand. In 2004, Millen sold her business and the accompanying intellectual property rights to the Icelandic group Baugur for £95 million.
Consider the future before monetising the past
When Millen looked to return to the fashion industry, the plan was to use the name KAREN; she also wanted to launch a range of products in the homeware market under the name KAREN MILLEN. Millen challenged the agreement preventing her from using her name in this way but the High Court ruled, the agreement still stood; Baugur still owned the rights to ‘Karen Millen’, and use of the names KAREN and KAREN MILLEN, even if used in a different commercial market and regardless of the fact it was her personal name, would breach the agreement and would cause confusion between the two brands. Millen no longer had the right to trade under her name.
Elizabeth Emanuel, designer of Princess Diana’s wedding dress, provides another cautionary tale. In 1990, Emanuel began trading as a designer under her own name. In 1996, together with a company called Hamlet International Plc, she formed a company called Elizabeth Emanuel Plc and assigned all IP rights to this company. When Emanuel subsequently parted company with the business itself, she tried to challenge the validity of the ELIZABETH EMANUEL trade mark registration arguing the public would be deceived if a company owned the mark to which she was not connected. However, the Court ruled that the name ELIZABETH EMANUEL would not deceive solely because it corresponded to the name of a designer. The Court said that even if consumers may be influenced by connecting the trade mark with Emanuel, the mark is still connected with the business which owns it. Emanuel had to accept that a third party owned the rights to use her name as a trade mark and as such, she was precluded from using her name.
It’s personal
It is clear that whilst it may feel like a neat and simple solution to brand your business using your own name, it is not so. Both instances discussed above, resulted in a fashion designer being prevented from using their own name after selling their business. Whilst there may have been scope when selling the business to retain the IP, the commercial reality of that happening is unlikely.
When buying or investing in a business, it is often key to obtain the rights to the IP intrinsically associated with that business; in all likelihood the sale will be dependent on this. Therefore, any buyer or investor will want the IP to be transferred to them. Consequently, before using your own name as your brand, you should weigh up the legal and commercial pros and cons of instead adopting a distinctive mark that is not your name. This will allow you to retain your own ‘personal brand’ if you part ways with the business.
Barker Brettell has a specialist team of Chartered Trade Mark Attorneys who can assist and advise you. To continue the conversation, please contact the author, or your usual Barker Brettell attorney.
