Read this before you use your own name as a brand or trademark

Thinking about using your own name as a brand or trademark?

Here’s what you need to know.

Want to use your own name as a brand or trademark?

On face value, it can appear to be a good decision to make. From multi-national clothing designers like Chanel and Dior to architectural firms and coffee suppliers we see individual names used as brands all the time.

But before you register your own name as a brand or trademark, it’s wise to understand the responsibilities that come with it.

1 When you register your own name as a trademark it becomes a commercial asset

There have been high profile cases of fashion designers who have registered their own name as a trademark, with a company or corporate entity as the listed trademark owner, who have lost the rights to this commercial asset.

From restructuring, corporate takeover or insolvency, losing the rights to this asset can be costly: emotionally and financially.

After designing Princess Diana’s wedding dress, Elizabeth Emanuel took the opportunity to expand her brand and entered into a partnership that included using her own name as a trademark. This was also used to license her products and ownership was assigned to her new business partnership.

However when the partnership turned sour and went into administration, Elizabeth Emanuel lost her rights to brand her designs using her own name. Emanuel took her case to the European Court of Justice (ECJ) who found that even though there could be confusion around clothes with the Elizabeth Emanuel brand name, the trademark, or its ownership assignment, could not be revoked. The ECJ ruled that the mark was legally assigned and valid.

This meant that if Emanuel designed under her own name, she would be risking trademark infringement.

 

2 When you register your name as a trademark or brand it creates hidden responsibilities

In Australia, a high profile bad faith trademark case involved Bob Jane, a celebrated racing car driver who built an Australia wide chain of successful tyre retailers.

After a bitter family dispute with his son Rodney Jane, CEO of Bob Jane Corporation (BJC), proceedings were brought against Bob Jane by BJC in relation to trademark infringement, passing off and other related claims. The court restrained Bob Jane from using his own name to sell accessories for cars, wheels, tyres or batteries.

Bob Jane Corporation (BJC) is the registered owner of trademarks including “Bob Jane” and a logo depicting his face. With extensive evidence that these trademarks promoted BJC’s business, the court recognised that by 2011 BJC had acquired a considerable reputation with the Bob Jane trademarks.

Following the family disagreement in 2011, Bob Jane left BJC and set up a new tyre selling business using the name “Bob Jane”. With similar domain names and logos used, the primary claim made by BJC in the proceedings was trademark infringement had occurred through Bob Jane’s use of “Bob Jane” or “Jane”.

During the case, Bob Jane submitted to the court that he had used his own name in good faith. The Trade Marks Act in Australia states that infringement does not occur if a person uses their name in good faith in relation to goods or services.

Evidence was produced during the court case including company names, business stationery, logos and search engine advertising that proved customers became confused as to who they were purchasing their products from. The court found that Bob Jane’s name had become part of the applicant’s trademarks and that being aware of this, he had infringed the BJC owned marks through use of the name Bob Jane and Jane as brands.

Following the court’s consideration of the evidence of both parties they could not agree that Bob Jane had used his name ‘in good faith’ as would be required for a valid defence against BJC’s infringement claims.

They found that it was clear Bob Jane commenced using his name ‘as a trademark’ knowing and intending to leverage of the reputation of the Trademarks held by BJC.

More details about the bad faith case can be found here.

Have questions about whether you should register your name as a brand or trademark?

Contact Quick Off the Mark® here.

DISCLAIMER:

The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs

BIO:

Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.

In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.