People often register their names as trade marks to increase the appeal of their goods or services and establish themselves as prominent players in the relevant sector. While the idea of registering your name as a trade mark may seem appealing, the strategy poses several unforeseen risks. In this article, our trade mark solicitors explain the benefits of registering your name as a trade mark and highlight the dangers of doing so.
If you’re planning to register your name as a trade mark, it’s worth carrying out a trade mark search to make sure it’s free to use. You should also consider speaking to a trade mark solicitor to see if you are adopting the right approach to brand protection.
Contents:
- Why do people register their name as a trade mark?
- What should business owners consider before they register their own name as a trade mark?
- What are the disadvantages of registering your name as a trade mark?
- How can I ensure my brand remains relevant over time if it’s so closely tied to my personal identity?
- What alternatives are there to registering my name as a trade mark?
- Summary
Why do people register their name as a trade mark?
For celebrities, making money from their name can be big business. Prime examples of well-known personalities who have leveraged their celebrity status to build a successful brand are David and Victoria Beckham. By licensing ‘Brand Beckham’ in connection with everything from clothing to coffee, the Beckhams have succeeded in amassing a massive multi-million-pound fortune that dwarfs the income gleaned from their original day jobs as a footballer and a popstar.
Many high-profile people register their name, signature, and other defining characteristics as trade marks. Trade marks enable their owners to develop a reputation across diverse sectors, facilitate licensing deals, and provide valuable protection against third parties using the marks without the owner’s permission.
The Beckhams have registered their names as trade marks covering everything from clothing to dolls across multiple jurisdictions. Many iconic fashion brands are named after their founders, like Chanel, Alexander McQueen, and Gucci. Other celebrities who have obtained trade mark protection for their names include the Kardashians, Taylor Swift, and Heston Blumenthal.
It isn’t only celebrities who build a brand around their names, though; many ‘normal’ business owners use their names in connection with their business. People buy into people, so personalising your business rather than hiding behind an abstract name can give your business a sense of familiarity and personality. Putting your name to your business sends a message to consumers that you are proud of your offerings and instils confidence in the quality of your goods or services.
What should business owners consider before they register their own name as a trade mark?
There are no rules prohibiting the registration of first names, surnames, or both, as trade marks in the UK. Your application will be assessed according to the legal criteria applicable to all trade mark applications.
Trade mark applications for names may run into more difficulties than those for abstract brand names. For example, a key requirement for trade made mark registration is that the proposed mark is distinctive, meaning it must be capable of distinguishing the applicant’s goods and services from those of other businesses. As a result, an application for a popular name may face issues for its lack of distinctiveness.
Nobody has a superior right over their name as a trade mark. So, if someone has already registered your name as a trade mark for the goods or services you require protection for, they can oppose a trade mark application on the basis that it would impact their earlier rights.
Taking expert legal advice from trade marks solicitors like ours will avoid you wasting time and money on a trade mark application that ultimately fails. Our trade marks solicitors will assess your proposed mark against the legal criteria for registration, check for any earlier marks that may give rise to oppositions, and advise you on how to register a trade mark.
What are the disadvantages of registering your name as a trade mark?
Building your brand around your name can seem like a common-sense approach. Before turning your name into a brand, it’s important to appreciate the problems that can come with doing so. They include the following:
Complications in future business deals
In brand acquisitions, the brand name is one of the most valuable assets being transferred, and the asset that most potential purchasers are keenest to acquire. When that asset is your name, selling your brand essentially involves you selling the right to use your name to someone else.
Once you have sold your trade mark to a new owner, any further use by you may constitute trade mark infringement, meaning you will be unable to use your name in connection with commercial activities involving the goods or services the trade marks are registered for. Some brand sale agreements expressly prohibit the original brand owner from registering their name as a trade mark for any goods or services in the future, and most purchasers require that the seller agrees to refrain from marketing any future venture in a way that suggests a connection with the original brand, which may include using your name.
To highlight the issue, it can help to consider a real-life situation in which an individual who had built up incredibly successful businesses under their name faced significant problems after selling their brand to a third party. One such individual is Karen Millen.
Karen Millen enjoyed staggering global success with the fashion brand she launched with her husband in the early eighties. In 2004, she sold the business, including the trade marks she had secured for her name. At the same time, she agreed to refrain from using her name in connection with any business that competed with the purchaser anywhere in the world.
Fast forward to 2011, when Millen decided to pursue a new venture selling homeware under her full name, and clothing under her first name ‘Karen’ in the US and China. She sought declarations from the Court that her plans would not breach the intellectual property rights of the companies that had acquired her business, arguing that those rights should be frozen at the time the business was sold, with any subsequent expansion disregarded.
The Court disagreed, stating that it would be impractical to assess Millen’s proposals against the business as it had been in 2004. The Judge concluded that the Karen Millen name was highly distinctive and, even though the goods Millen proposed selling under it were different from those offered by the new owners, consumers would inevitably assume they were connected in some way with the Karen Millen brand. Millen’s proposed use of her first name, ‘Karen’, would similarly cause problems, because her clothing would be sold alongside goods bearing her full name and in close proximity to those of the new owners of the Karen Millen brand. Going ahead with the new ventures would place Millen in breach of the sale agreement.
As the above case study illustrates, you must proceed with extreme caution when agreeing to transfer the intellectual property in your own-name brand to a third party. Expert legal advice is essential in ensuring you give away no more than you need to and you are clear on the effects of the deal on any future business ventures.
Reputational issues
When you sell your brand, you pass control of it to the purchaser. You no longer have a say in the direction the brand takes or any control over its goods or services. Despite your lack of involvement, though, anything negative that happens to the brand remains linked with you. Karen Millen, for example, has reportedly claimed to have felt ‘embarrassed’ at times by the brand she created after she sold, saying she finds it difficult to have no control over the styles it now sells under her name.
When a person and a brand share a name, anything negative that happens to the person behind the brand can have an impact on the brand itself. When you build a brand around your name and core values, such as family life and honesty, the entire ethos of your brand suffers if those core values are called into question.
Enforcement issues
To obtain trade mark protection, your branding must be distinctive and distinguish your goods from those of other businesses. As we have explained above, this can cause issues with trade mark applications for popular surnames, such as Smith. Having said that, if you can prove that you have an established reputation in your sector and consumers understand that your goods or services originate from you, you may be able to overcome this hurdle and achieve trade mark protection in the UK.
Trade marks are territorial rights, meaning a UK trade mark only offers protection here. If you wish to expand your trade mark portfolio and obtain protection abroad, you will need to satisfy each country’s trade mark criteria. If your name is common in a particular country but you have no reputation there, your application may encounter problems for lack of distinctiveness.
Even if you succeed in registering your name as a trade mark, you may struggle to enforce it against third parties using it without your permission. That’s because, under UK law, a trade mark is not infringed by someone using their name for honest commercial practices. Being able to prevent others from using your trade mark is a key benefit of trade mark protection, which you may be unable to fully exploit when your trade mark is your name.
Expansion issues
Even if you have succeeded in building up a reputation under your name, chances are it is limited to a specific sector. This can cause problems if you decide to expand your brand into different areas with which you aren’t readily associated. Not only may you struggle to trade mark your name for goods or services within the new sector due to lack of distinctiveness, but you may also discover that other businesses are already trading under the name, making it difficult for you to stand out in the market.
How can I ensure my brand remains relevant over time if it’s so closely tied to my personal identity?
All brands need to take proactive steps to remain relevant over time, but those associated with a specific person may need to work harder to do so, particularly if that person is well-known, whether locally or globally.
The key to ensuring any brand remains relevant is successfully maintaining the core values consumers rely on while adapting to changes in trends and culture. Brands need to ensure the elements that initially attracted and now retain consumers, such as quality, value, or a local connection, remain intact and, at the same time, diversify their offerings as required. When you are essentially your own brand, it’s necessary to extend those changes to yourself. If your star begins to wane, so too can your brand’s appeal. By ensuring you remain relevant, you can also ensure your brand remains relevant.
What alternatives are there to registering my name as a trade mark?
When you have built your brand around your name, you may be unable to obtain trade mark protection for your brand or successfully enforce your trade mark rights against third parties. In these cases, there are a few alternatives to registering your name as a trade mark. They include:
- Simply using your name in connection with your business. Even if your name has been registered as a trade mark by someone else, you can still use it, provided you do so honestly.
- Registering your logo as a trade mark. Many brands are recognisable not only by their name but also by their logo. A strong, instantly recognisable logo can help your business stand out from the crowd and, importantly, will be registrable as a trade mark if it fulfils the registration criteria.
- Relying on passing off. Passing off is a common law remedy that protects a business’s goodwill and reputation. If a third party starts using your name in such a way that it deceives consumers into believing that their goods originate from or are in some way connected with your business, you may be able to rely on passing off to force them to stop. You can learn more about how this works in our detailed guide to passing off
Summary
Using your own name as your brand has many potential benefits. It’s essential to understand the dangers inherent in doing so before spending time and money on developing your brand, only to run into problems when you come to trade mark it or sell your business. By working with experienced trade mark solicitors like ours from the outset of brand development, you can successfully navigate any issues and build a brand that reflects your core values and is capable of legal protection.
