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Using your own name as a business brand

13 December 2018

Karen Millen is a well-known fashion designer, who had founded the business Karen Millen Fashions Limited. She subsequently sold out, and in doing so, agreed to restrictions for use of her name.

Despite her application for declarations from the court that she could in certain circumstances use her name and apply for trademarks, in 2016 the court upheld that she was restricted in the use of her name for commercial purposes.

In a recent EU trade mark case, the court decided a case between the clothing brand KENZO and Mr Kenzo Tsujimoto (KT) in respect of the right to register a business owner’s name as a trademark. KENZO had opposed KT’s trademark applications on the basis his mark was too similar to the KENZO registered trademarks.

In its decision the court held that, whilst EU law does not permit the owner of a registered trademark to prevent another person from using their own name, at the same time the law does not provide an unconditional right to use their name.

The court highlighted this would not be allowed if it took unfair advantage of, or was detrimental to, the distinctive character or repute of an earlier trademark. In this case, KENZO won.

These cases are a reminder of the importance to those selling businesses of preserving own name rights, and for those buying the business to protect against competition from the seller. They also offer an insight into how the court balances the competing interests, and can be seen as favourable to brand owners who wish to stop competitors claiming own name rights to avoid existing trade mark protection.

Paul Gordon joined Willans from a City law firm in 2005. Specialising in dispute resolution, he has experience in handling a broad range of commercial matters, including intellectual property, director and shareholder disputes, and engineering and construction cases. 

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