Ranee van der Straaten: The risks of personal branding

Print this page 27-09-2017

World Trademark Review, August/September 2017, issue 68, p. 93-95, Ranee van der Straaten (Banning):
“This article first appeared in World Trademark Review issue 68, published by Globe Business Media Group – IP Division. To view the issue in full, please go to www.WorldTrademarkReview.com.”

“Your personal name has been yours since birth and will be yours for the rest of your life. Unsurprisingly, you feel entitled to use it as you please. However, using your name as your company name or product brand can have serious legal consequences. Your personal name might be similar or identical to someone else’s trademark and using it in the course of trade might thus amount to trademark infringement. Recent changes to EU trademark law have made it easier for rights holders to act against infringing trade names. Since the EU reforms, the so-called ‘own name defence’ can now be successfully invoked only by natural persons and is no longer available for companies.”




“The new EU Trademark Regulation (2015/2424) entered into force on March 23 2016. The revised Article 9(3) now explicitly states that “using the sign as a trade or company name or part of a trade or company name” may be prohibited. Article 9(2) refers to use of a sign “in relation to goods or services”. In accordance with the Céline judgment, the recitals explain that confusion with a trademark may take place when a company uses the same or a similar sign as a trade name in such
a way that a link is established between the company bearing the name and the goods or services of that company. Therefore, an EU trademark could also be infringed by the use of a sign as a trade name or similar designation, as long as that use is made for the purposes of distinguishing goods or services.”




"In some cases, the use of a personal name as a trademark has required far more redesigning than initially expected. In 2007 Kate Spade sold her fashion company Kate Spade LLC to Liz Claiborne. After the sale, Spade had to cease the use of her personal name in a commercial manner in order not to infringe the IP rights now owned by Liz Claiborne. Spade continued designing under a
different name, eventually changing not only her trade name, but also her personal name to Frances Valentine – a useful reminder that you might want to think twice before branding yourself and your product at once.”


See also: Ranee van der Straaten: Smell-alikes: Lessons from Chanel and Coty's smell-alike victory