UK: The danger of using your name as a trademark
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Registering your own name as a trademark for your business may seem like a good way to build 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 trademark and eventually wants or needs to sell that business, it is likely to involve selling the trademark rights in their name. Indeed, much of a company’s value often resides in the name itself, especially in 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 constitute trademark infringement.
WHAT CAN WE LEARN FROM ELIZABETH EMANUEL?
Elizabeth Emanuel, the designer of Princess Diana’s wedding dress, only recently won back the right to design under her own name after a 25-year legal battle.
After Elizabeth’s marriage failed, she sold her business. When she later decided to return to the fashion business, Elizabeth was prevented from designing under her own name because she had voluntarily sold her trademark rights in her name, so using her name would amount to trademark infringement.
Elizabeth isn’t the only one losing the right to design under her own name. Kate Spade has not been involved with the well-known brand for many years and has now launched a brand under the name Frances Valentine to avoid infringing on the Kate Spade brand. Karen Millen and Jo Malone are other examples of other designers who have gone through similar experiences, for the latter we have seen the emergence of the Jo Loves brand.
WHAT IS THE SOLUTION FOR THOSE IN THIS SITUATION?
In the UK, the law provides for a moral right of attribution in copyrighted works. This means that even though a creator may lose the right to use their own name as a trademark, creators may still have the right to indicate that they are the person who designed the work.
However, it is important to note that this moral right of attribution is a lesser right than the right to use the name as a trademark. Designers in this situation will still not be able to use their own name as a form of trademark to indicate the origin of their work.
WHAT SHOULD BUSINESS OWNERS CONSIDER BEFORE REGISTERING THEIR OWN NAME AS A TRADEMARK?
Before business owners decide to register their own name as a trademark, they should carefully consider whether they will be able to accept the position of not being able to do business under their own name in the future. .
If a business owner registers his name as a trademark and ultimately decides to sell his business; they must ensure that they have a carefully drafted purchase agreement setting out the precise scope of the provisions regarding the right to use their own name in the future; if this is not permitted, the price paid should make up for what is being given up, i.e. the right to trade under their own name.
Originally published on December 9, 2021
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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