Lawyer Monthly Magazine - September 2021 Edition

42 WWW.LAWYER-MONTHLY.COM | SEP 2021 THE PITFALLS OF USING YOUR OWN NAME AS A TRADEMARK There is power in names, or so the saying goes. That is most certainly true in the world of luxury fashion brands. Some of the most renowned fashion houses are named after their founders: Chanel, named after the famous Gabrielle (Coco) Chanel; Dior, after Christian Dior; Burberry, after Thomas Burberry, and the list goes on. There is value and goodwill associated with famous names, and for such value to be protected from free-riders who would take advantage, designers resort to the legal protection of trademarks. Trademarks are signs that allow the holder to show that the products or services under that trademark are controlled by it and to distinguish them from the products or services of another undertaking. Registering a sign as a trademark prevents other undertakings from using the same or a similar sign for goods and services whenever there may be confusion between the trademark holder and other undertakings with respect to the origin of goods and services. However, while the advantages of wide recognition and increased value of a trademark registered by a successful designer cannot be denied, in the complex world of trademark protection there are also pitfalls of using your own name as a registered trademark. First, there is the issue of clearance. If one wishes to register their name as a trademark or simply use it in commerce without registration, one must ensure the name is not already registered for the goods or services for which the registration The Pitfalls of Using Your Own Name as a Trademark Flavia Stefura Senior Associate, MPR Partners 6A Barbu Delavrancea Street, Building C, Ground Floor, 1st District, 011355 Bucharest, Romania T: (40-21) 310 17 17 F: (40-21) 310 17 18 E: office@mprpartners.com Flavia Stefura Flavia Stefura is a part of the advisory department at MPR Law, being primarily involved in IP, data privacy, competition, consumer protection and M&A matters. Bringing a wealth of experience from her work on behalf of reputed international law firms present on the Romanian market, Flavia is also versed in corporate and commercial, employment, regulatory as well as administrative matters. She has advised high profile clients active in various industry sectors including retail, FMCG, banking and finance. Intellectual property law is often fraught with unforeseen obstacles. Below, we hear from Flavia Stefura, Senior Associate at MPR Partners, who shares the disadvantages of using one’s own name as a trademark.