Designing under your own name is a natural, even intuitive choice for many designers and is an established practice in the fashion industry. To protect their brand, designers often register their own name as a trade mark. Associating your own name with your designs has many advantages, but it is also important to understand that your trade mark, incorporating your name, is also a commercial asset. Losing the rights to that asset (through corporate restructuring, insolvency, or assignment) can be costly to a designer.
One famous case regarding an own-name trade mark involved Elizabeth Emanuel, well known for designing Princess Diana’s wedding dress in collaboration with her then husband. After this initial design success, Emanuel entered into a partnership that she hoped would expand her brand offering. Emanuel’s business and its assets, including her own-name trade mark, were assigned to the new partnership to allow for the licensing of her products. Within a few months, the partnership went into administration and, following a whirlwind of unfortunate circumstances, Emanuel lost all rights to design under her own name. She took her case to the European Court of Justice which, despite finding the potential for consumer confusion about garments displaying the Elizabeth Emanuel name, ultimately found that the trade mark could not be revoked on that basis. The ECJ said the mark was valid and had been legally assigned; Emanuel could no longer design under her own name without risking a trade mark infringement action.
Since the Elizabeth Emanuel case in 2006, there have been numerous similar high-profile cases where a change in ownership of an own-name trade mark has resulted in the loss of designers’ rights to associate their designs with their name.
The perils of losing ownership of an own-name mark were also seen in 2011 when, following an incredible success story that saw their fledgling shoe business catapult into a well-known luxury label, Kari Sigerson and Miranda Morrison lost their Sigerson Morrison trade mark in the wake of their unusual decision to seek financial backing from a low-cost shoe mogul. Following decisions to move shoe production from Italy to China, and suspected copying of designs by the financial backer’s low-cost shoe line, relations soured; both Sigerson and Morrison were fired from their namesake company, which held their own-name trade mark.
The designers also feel their reputations have been tarnished by the company’s continued production of lower-cost shoes designed by an anonymous in-house team and bearing their names.
Most recently, Karen Millen is pursuing a contractual claim in the UK for the right to design under her own name following a restructuring of the Karen Millen group. The case will be heard in the High Court in the UK in July 2016.
Continuing to design under your own name, despite having assigned rights in your trade mark to others, has proved to be a bad idea. Menswear designer Joseph Abboud did exactly that after selling his business and agreeing to a three-year non-compete clause. He launched a new line under his own name within three years, and was subsequently sued in the US for infringement of the Joseph Abboud trade mark. Abboud relied on a fair use defence; injunctive relief was granted against him. Abboud is now only able to use his name in a very limited manner in promotional materials, which must be accompanied by a burdensome disclaimer indicating that Abboud does not own his namesake trade mark.
SO HOW CAN DESIGNERS PROTECT THEMSELVES?
In contrast to all these stories of loss, Donna Karan set a licensing gold standard in this area when she sold Donna Karan International. She strategically granted intellectual property rights in the Donna Karan trade marks to Gabrielle Studio, Inc, a company she owned, which in turn, licensed the right to use the trade marks to the new owner. The licence contained a change-of-control provision allowing for termination of the contract if more than 30 percent of the new owner was acquired by a third party. Through strategic intellectual property management and licensing, Donna Karan has been able to control the ongoing use of her namesake trade mark.
The European Trade Mark Directive allows for an “own name defence” to trade mark infringement actions. Following amendments made by the Trade Mark Directive 2015 (to be implemented into national legislation by January 2019), this defence will now only apply to natural persons. Despite the own name defence aiming to prevent proprietors of registered trade marks from prohibiting “fair use” of a person’s own name to identify him — or herself, it is unlikely that this defence would assist designers who have knowingly assigned their namesake trade mark as part of a business transaction.
Designers should consider whether using their own name to identify their brand is the right decision long-term. If it is, protecting their own name by registering it as a trade mark is a wise choice. However, such a mark must be managed carefully. Ongoing consideration should be given to how the trade mark is held, and the extent to which the owner is prepared to assign or licence its use to others, being mindful of the long-term career implications for the designer of assignments of the mark. It is preferable for designers to protect and maintain a right to associate designs with their own name through strategic intellectual property management which will ensure the longevity of the brand and the designer’s career.