By Sharon Givoni*
At the February 2013 seminar for Creative Women’s Circle, I had the opportunity to talk about the importance of trade marking.
It’s a live issue, and I was interviewed late last year on the current affairs show Today Tonight to comment on the story of two creative business mums, Samantha Haydon and Shelley Tilbrooke, who created an online business called Zara+Lily (named after their own daughters).
They sold children’s clothes, toys, linen, bags, jewellery and the like.
Samantha Haydon and Shelley Tilbrooke has apparently contacted Today Tonight after receiving a “cease and desist” letter from clothing giant ZARA asking them to stop using the name Zara+Lily as a brand.
They did not want to fight it, so changed their business name to “Peach +Pear Kids”.
The question I discussed in my talk at the Creative Women’s Circle was: Can these women use the names Zara and Lily as a business name, given that they are the names of their own daughters?
What about using your own name as a business name? Many creative brands incorporate artist’s names.
The key messageIf it is important to you, get it registered as a trade mark.
Otherwise, even if it is your very own name, you can be stopped from using it in some circumstances. Trade mark registration also gives you amazingly broad rights.
While I cannot comment on the specific facts of the Zara and Lily case, what I can say is, sometimes you can be stopped from using your own name if by chance, it happens to be too similar to a famous name that has a reputation or is registered as a trade mark.
For example, the fact that your real name may actually be Elle will not mean that you can start a new lingerie label under that name. Or, if a woman named Sue Smith were to start her own Smith’s Potato Chip Company, she could legitimately be sued by the owner of the registered trade mark for the word “SMITH’S” for potato chips in Australia.
About the law
The reason for this is that the law recognises that a lot of hard work is put into building up goodwill and reputation in a brand name. Therefore, if someone else uses something similar, they could be wrongly impinging on this.
The existence of two similar brand names for the same goods or services can also lead to confusion and that is not good for anyone, especially in the creative industry where works are associated with the artists. Think MATTT for bags, think POLLI and Ayala Bar for jewellery, and Cristina Re for stationery. These are trade marks that I have registered for clients.
Can you use your own name if someone else “got there first”?
Despite the above, there are situations where you can trade mark your own name and use it in your branding strategy.
In a well-publicised case back in 2009, the luxury jewellery chain Tiffany & Co was unsuccessful when in trying to prevent New York based fashion designer Tiffany Koury from registering her own name as a trade mark for clothing. It was considered that the different products, jewellery and clothing, were different enough. Furthermore, the words “TIFFANY” and “TIFFANY KOURY” look and sound very different. The words “TIFFANY KOURY” may be registered as a business name.
The rich and the famous
In a reversal of the ‘David-and-Goliath’-style legal stoush between Tiffany & Co and Ms Koury, in 2009, a Gold Coast handbag business, Mischa Accessories, tried to stop actress Mischa Barton from trade marking her name in Australia.
Despite this, Mischa Barton was able to register her name as a trade mark and the two logos shown below:
The Australian trade marks register has a number of registrations for the names of famous celebrities, which include Kylie Minogue, Ian Thorpe, Lleyton Hewitt, Roger Federer, Andre Rieu, Beyoncé and Tiger Woods (all covering varying goods and services).
What to do when choosing a brand name
When creative women in business choose a new brand name, I always advise that it is really important to make sure that no one else has prior rights to that name – even if that brand name happens to be one’s own name.
Also, if you are already using your own name as a brand: protect it! There are three points to consider.
- If you do use your own name or part thereof as a brand or part of your branding strategy, considering trade mark registration from an early stage is necessary.
- Trade marks are generally granted on a “first come first served basis”.
- Just because it is your own name, it may surprise you to learn that this does not give you an automatic right to use it as a brand or business name.
Below, I have set out a list of some personal names that have been registered as trade marks in Australia, notwithstanding that some of these are common names.
- “Elizabeth”(trade mark no. 508952): wines and other alcoholic beverages
- “Peter Alexander”(trade mark no. 524244): clothing
- “Lily”(trade mark no. 569719): kitchenware
- “Collette Dinnigan” (trade mark no. 718276): clothing
- “Jessica” (trade mark no. 757197): cosmetics
- “Sussan” (trade mark no. 764949): clothing and advertising
- “Emily” (trade mark no. 815090): wines
- “Collette” (trade mark no. 887192): clothing
- “Cristina Re” (trade mark no. 973483): stationery
- “Sharon-lee” (trade mark no. 1021636): cosmetics
- “Jasmine”(trade mark no. 1057799): lingerie
- “Estelle” (trade mark no. 1083176): alcoholic beverages
- “Suzy Smith” (trade mark no. 1183906): leather goods and clothing
- “mattt” (trade mark no. 1210683): bags
- “Christine Alexander” (trade mark no. 1235460): clothing and handbags
- “Madeleine Wilson” (trade mark no. 1364470): knitwear and clothing
- “Wendy Berry Sales Evolution” (trade mark no. 1352849): coaching and education
- “Isabelle” (trade mark no. 1387640): wines
DISCLAIMER: As with all areas of the law, it is recommended to seek legal advice tailored to your own circumstances. This article is of a general nature only.
*Sharon Givoni is a member of the Creative Women’s Circle and has been running her own legal practice for over 12 years, with a strong focus on creative industries. Her email address is firstname.lastname@example.org and her website is located at www.sharongivoni.com.au. She has assisted a number of Creative Women’s Circle members with their brand protection matters and has a reputation being very approachable and for always giving legal advice in plain English. Call her for a chat about your brand on 0410 557 907.