Brand owners who build brands under their own name unsurprisingly attach great importance to how their name is used commercially. Once an individual’s name is perceived by consumers as indicating a business, it becomes a significant commercial asset.
In the UK, as is the case in many common law jurisdictions, there are no separate so-called “personality rights” which grant special protection to names of famous individuals. Instead, to protect one’s own name in the context of commercial uses in the UK, parties need to rely on trade mark law and the law of passing off.
Here we discuss what lessons can be learned from the recent Australian decision of Katy Perry v Katie Perry. Finally, we turn to a wider discussion of the legal avenues that are available to those looking to protect commercial use of their own name in the UK.
The Katy Perry v Katie Perry decision
In 2009, an Australian fashion designer with a birth name Katie Perry registered “KATIE PERRY” as a trade mark, in relation to clothes.
Later in the same year, a pop singer by the name of Katy Perry (who perhaps needs no introduction!) applied to register “KATY PERRY” as a trade mark also in Australia. The singer’s legal team contacted the Australian fashion designer, requesting that she ceases using the “KATIE PERRY” brand name.
Eventually the two parties entered a dispute which advanced to the Federal Court of Australia, as the Australian fashion designer claimed that the pop singer had infringed her trade mark. The judge found that the singer’s company, Kitty Purry, had infringed the KATIE PERRY trade mark by selling clothing items in Australia. An injunction was ordered, preventing Kitty Purry from using an infringing sign and an order of damages was made.
Meanwhile, Katy Perry – the individual herself – was able to rely on the defence of using one’s own name honestly, to escape liability for infringement.
This decision serves as a useful reminder that if one wants to use their own name commercially, they should consider registering it as a trade mark. It is not enough to rely on the mere fact that a company is trading under the name of an individual who may be connected with its activities.
Most importantly, you should never assume that you can use a mark in commerce and/or register it as a trade mark without first verifying this with legal advisors. Before adopting a new trade mark or brand name, it is nearly always advisable to conduct trade mark searching. Clearance Searches check whether they are any earlier rights owned by others that could present infringement risks. You can read about how we conduct searches here.
Ultimately, one need only glimpse at the UK trade mark register to see how popular the practice of registration of individual’s names as trade marks is. There you will see the likes of HARRY STYLES and LIZZO which are all protected trade marks in the UK.
See here for our previous article on the registration of personal names as trade marks, where we discuss the possibility of assigning (i.e. transferring) rights to one’s own name in the form of a registered trade mark under commercial agreements.
Passing off
Another avenue that is available to individuals wishing to protect their names in commerce, is by proving that unregistered rights have accrued in their own name under the law of passing off. Passing off allows signs that have not been registered as trade marks to enjoy a certain kind of protection, provided that a different set of legal requirements is met.
The first requirement that must be met for a claimant to enforce their rights under passing off is to establish that they have so-called “goodwill” in the sign that they are seeking to protect. This means evidencing that a substantial part of the UK general public responds to the sign connected to a specific business, bestowing on the sign an “attractive force that brings in business”.
There is now a well-established practice of courts curbing the misleading use of famous personalities’ name or images under the law of passing off. For example, in the case of Robyn Rihanna Fenty v Arcadia [2015] EWCA Civ 3, the Court of Appeal prevented unauthorised use of a pop star’s image, finding that the use of that image amounted to a false representation that the pop star had personally endorsed the clothing brand, contrary to fact.
Well Known Marks
The protection of “well known marks” can apply regardless of whether a mark is registered in the UK or not, and it presents yet another legal avenue for protection of famous names.
The recent changes to the protection of well known marks in the UK clarifies that UK-based holders of a well known mark will be able to make use of this protection which seeks to protect signs that are exceptionally well-recognised by the general public. For example, “Google” and “British Airways” are cited as examples by the UKIPO. See the recent UKIPO notice about this here.
To make use of this protection, the claimant will have to evidence the degree of knowledge or recognition of the mark in the relevant sector of the public. The threshold for a finding that a mark is indeed well known is very high. The unusually low number of cases disputed under this ground is perhaps telling of the difficulty that its stringent requirements present for potential claimants.
Concluding thoughts
If you are thinking seriously about using your own name in commerce, then speak to one of our trusted advisors first. We will steer you in the right direction, considering all the possible avenues to help protect the use of your name in a way that meets your unique business needs.
