For brand owners who have built their reputation under their own name, the commercial use of that name becomes a significant asset. In the UK, unlike certain jurisdictions with specific “personality rights” for famous individuals, the protection of one’s name in commercial contexts relies on trademark law in terms of registering your name as a trademark at the Intellectual Property Office (IPO) and the law of passing off.
The recent case of Katy Perry v Katie Perry in Australia serves as a noteworthy example. An Australian fashion designer registered “KATIE PERRY” as a trademark for clothing, while the globally renowned pop singer Katy Perry sought to do the same. A legal dispute arose when the singer’s team requested the designer to cease using the name. The court ruled in favour of the fashion designer, finding infringement by the singer’s company, Kitty Purry. However, Katy Perry herself escaped liability by using her own name honestly.
This case underscores the importance of registering one’s name as a trademark when considering commercial use. Mere association with a company using the individual’s name may not suffice for protection.
Furthermore, it’s essential to conduct trademark searches before adopting a new name to ensure it doesn’t infringe on existing rights. Notably, many individuals have registered their names as trademarks in the UK, such as HARRY STYLES and LIZZO.
In addition to trademark protection, individuals can explore the legal avenue of passing off by demonstrating “goodwill” associated with their name in commerce. Courts have a history of protecting famous personalities from misleading use of their names or images. Unauthorised commercial exploitation or misleading use of their identity can damage their reputation and cause financial harm. Rihanna successfully sued Topshop for using her image on a T-Sirt without her consent. This case highlighted the significance of obtaining permission for the commercial use of a celebrity’s image.
The concept of “well-known marks” extends protection to exceptionally recognised signs, whether registered or not. In 2022 the UK introduced changes to make it easier for holders of well-known trademarks to protect their marks. One of the changes is the ‘own name’ defence limitation.
the UK introduced changes to make it easier for holders of well-known trademarks to protect their marks. One significant change is the establishment of the ‘own name’ defence limitation. This change allows holders of well-known trademarks to take action against individuals or businesses using their mark even if the infringer is using their own name.
Previously, the ‘own name’ defence could be used by an individual or company to justify the use of a well-known trademark if it was their actual name. However, under the revised regulation, if the use of a well-known mark in this context is deemed to take unfair advantage of, or be detrimental to, the distinctive character or reputation of the trademark, it can be contested. Once again, this highlights the case by case approach taken to infringement and often by the legal system generally.
This change empowers holders of well-known marks to challenge the use of their marks even if it’s within a company’s or individual’s name, provided the usage takes undue advantage of the trademark’s reputation or dilutes its distinctiveness. It strengthens the protection of well-known brands against potential misuse or dilution of their trademarks.
This highlights that even if you are using your own name as your brand, you should still undertake adequate research to ensure that you are not infringing on the registered Intellectual Property of others.
In conclusion, if you’re contemplating using your name in commerce, consult with trusted advisors to navigate the various avenues available for protecting your name while aligning with your business’s unique needs. It’s a complex landscape where proper guidance is crucial.
If you’d give to book an appointment to discuss your business and brand and how best to protect it, please email info@nbrg.co.uk or book an appointment with our Head of IP Mitch Willmott on https://calendly.com/mitch-183 for your free consultation.
Written by Michaela Cusack
Director NBR Group.