Operating a business or brand under your own name is a fairly common practice, and a desire to tie a brand to their personality often leads to business owners using and registering their own name as a trade mark. However, there have been instances where this has created issues, notably with brand owners losing the right to use their own name for certain purposes through commercial arrangements which later turn out to have been over-restrictive (one example is in the Karen Millen case, discussed in our August 2016 edition).
A recent decision of the Court of Justice of the European Union in a long-running dispute demonstrates the challenges that individuals may also face when looking to register their name as a trade mark. Mr Kenzo Tsujimoto, owner of the Kenzo Estate winery in Napa Valley, applied to register international trade marks designating the EU for KENZO ESTATE in relation to various beverages in class 33, foods in classes 29, 30 and 31 and services associated with wine tasting in classes 41 and 43.
Fashion brand Kenzo opposed these applications relying on its earlier registration for KENZO. It argued its mark had a reputation in the EU and that use of the KENZO ESTATE mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of its mark.
The CJEU agreed that the applications for KENZO ESTATE would unfairly exploit the reputation of Kenzo’s mark. Mr Tsujimoto argued that more account should be taken of the fact that as his name was ‘Kenzo’, he had due cause to use the mark KENZO ESTATE.
However, the CJEU agreed with the General Court, specifically that there is no unconditional right to register a name or a forename as an EU trade mark. Further, the fact that “Kenzo” was Mr Tsujimoto’s forename was not enough to amount to due cause (and was indeed irrelevant).
Associating your own name with a brand has many advantages, particularly if that brand is heavily associated with an individual’s personality or style. Brand owners should still conduct the necessary clearance searches before using or registering a brand incorporating their own name given the potential risk of a challenge.
This extends beyond the question of whether the mark can be registered to potential challenges to the use of the mark. EU trade mark law provides for a defence to an infringement action where the use is of an individual’s name (the ability for a company or other legal entities to rely on the own name defence has been removed from the EU Trade Mark Regulation, and will be removed from UK law from January 2019). However, this defence will only apply where the use is made in accordance with honest practices in industrial or commercial matters, so there may be circumstances where an individual will be prevented from using their name for their business.