The Danger Of Using Your Name As A Trade Mark

• Published date: 20 January 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Albright IP
• Author: Ms Julia House

Registering your own name as a trade mark for your business may seem a good way to build up a reputation in your chosen industry. However, business owners should also be aware of the potential danger of doing so.

If a business owner registers their own name as a trade mark and eventually wants to, or needs to sell that business, it is likely this will involve selling the trade mark rights in their name. This is because much of the value of a business is often in the name itself, particularly in the creative industries, such as fashion design. As a result, ex-owners may be prevented from conducting business under their own name in the future, as this may amount to trade mark infringement.

WHAT CAN WE LEARN FROM ELIZABETH EMANUEL?

Elizabeth Emanuel, the designer of Princess Diana's wedding dress has only recently reclaimed the right to design under her own name after a 25 year-long legal battle.

After Elizabeth's marriage broke down, she sold her business. When she later decided to come back into the fashion business, Elizabeth was prevented from designing under her own name because she had voluntarily sold her trade mark rights in her name, so using her name would amount to trade mark infringement.

Elizabeth is not alone in losing the right to design under her own name. Kate Spade has not been involved in the well-known brand for many years, and has now launched a brand under the name of Frances Valentine to avoid infringing the Kate Spade trade mark. Karen Millen and Jo Malone are further examples of other designers that have had similar experiences, for the latter, we have witnessed the emergence of the Jo Loves brand.

WHAT'S THE SOLUTION FOR THOSE WHO FIND THEMSELVES IN THIS SITUATION?

In the UK...