Lawyer Monthly Magazine - September 2021 Edition

43 SEP 2021 | WWW.LAWYER-MONTHLY.COM THE PITFALLS OF USING YOUR OWN NAME AS A TRADEMARK is intended. Otherwise, there are risks of litigation and exclusion from the market under that name. A telling example was the case of Chanel Jones, an Indiana- based hair salon owner who lost the right to use her first name for commercial purposes in a dispute against the French fashion powerhouse Chanel. Another matter to be mindful of when registering one’s own name as a trademark is the fact that the trademark achieves its own standing and becomes separate from the natural person. Therefore, the name can be sold together with the business that it represents. Once sold, the natural person who once registered the name is no longer able to use the same name in connection with a similar business, or, possibly, with any other business. Judging from the case law available on this topic, it seems that some designers have not been aware of this potential issue when selling their eponymous trademarks. Famous designer names who can no longer be used in trade by their original holders include Elizabeth Emanuel, the designer of Princess Diana’s wedding dress, Paolo Gucci, Karen Millen and Joseph Abboud (though in his case, the designer can use his name in trade following a disclaimer that the products are not related to the ones of the assignee). In the case of Elizabeth Emanuel, who had sold the trademark “Elizabeth Emanuel '' and later tried to have the said trademark revoked, the highest court of the European Union, the European Court of Justice, gave a preliminary ruling. The Court reasoned that “even if the average consumer might be influenced in his act of purchasing a garment bearing the trademark ‘Elizabeth Emanuel’ by imagining that the appellant in the main proceedings was involved in the design of that garment, the characteristics and the qualities of that garment remain guaranteed by the undertaking which owns the trademark.” As a result, the “Elizabeth Emanuel” trademwark would not be revoked on the reason that it would mislead the public as to the origin of the goods when the goodwill associated with that mark has been assigned together with the business making the goods to which the mark relates. Luckily for Elizabeth Emanuel, her story has a happy ending, as she settled with Boi Group, the current owner of the trademark, to sell her clothes under her name within the TK Maxx chain. A cautionary tale can be taken out of these examples. When choosing an eponymous trademark, one should always consider what would happen in future ventures in case the registered trademark and goodwill are sold to a third party. Designers cannot simply sell their business for large amounts of money and then expect to create new businesses using the same name. When choosing an eponymous trademark, one should always consider what would happen in future ventures in case the registered trademark and goodwill are sold to a third party.