What to know when using your name for your brand

When creating a new business or brand, one of the many issues to be considered is what to call it.

For a designer, the most obvious naming choice is to use their own name, or a variant of their own name. It is common practice within the fashion and cosmetics industries for a designer or founder to name the brand after themself, and there can be many benefits in doing so.

However, there are also possible consequences to using your own name which should be considered at the outset to avoid running into future difficulties if you decide to sell your business.

The advantages of using your own name

For many emerging designers or young brands, marketing will start at an early stage on social media. Very often, the decision to use your name is not always a considered one, it follows the natural evolution of the brand in this way. Once reputation and goodwill starts to build in the designer or founder’s name, it then becomes difficult or undesirable to change the brand name.

Legally in the UK, you are less likely to infringe existing third-party registrations by adopting your own name, since UK law provides a defence to infringement for individuals using their own name in the course of their business, as long as that use is in accordance with honest practices.

For the ‘own name defence’ to apply, the use must be of a name which the person seeking to rely on the defence is ‘known by’ i.e. it must be your name by birth or a name which you are generally known by.

Typically, when creating a new brand name, it is advisable to conduct trade mark searches prior to use and registration to identify any existing third party registrations, or unregistered use that might present an infringement (or passing-off) risk.

However, if you are adopting your own name, then the risks relating to the use of that name may be lower. That said, you should bear in mind that whilst use of your own name could provide a defence to infringement, it doesn’t prevent an interested third-party from filing infringement proceedings. It is also important to remember that simply using your own name will not necessarily provide an automatic defence to infringement or passing-off since it will always be dependent on the facts of the specific case. For this reason, it is still advisable to conduct proper trade mark searches before adopting the name as your brand, even if it is your own name.

The ‘own name defence’ does not apply as a defence in trade mark oppositions, so if you are intending to register your brand name as a trade mark, it would still be worth conducting a trade mark search so that you are aware of any possible opposition risks prior to filing.

Even when using your own name as your brand name, you should still treat it as a ‘brand’ and protect it as a trade mark so that you can prevent others from using or registering a similar name. This is particularly relevant as the brand grows and becomes exposed to the risk of online infringements and counterfeiting.

When considering trade mark protection, it is also important to consider variants of your name. For example, if the brand name is Charlotte Tilbury, you would likely seek to register CHARLOTTE TILBURY in full but also perhaps TILBURY on its own since this is the more distinctive element of the name as a whole. It is possible that someone could seek to use that element, but in conjunction with a word or logo which is not similar to CHARLOTTE. This would be more difficult to prevent (albeit not impossible) relying on a registration for CHARLOTTE TILBURY.

But… Think about the future…

When naming the brand, it is important to think about your future aspirations and whether you are ultimately building the business with a view to seeking investment or to exit by selling the business to a third party.

If the brand name is your name, then all of the goodwill and reputation you have built in the brand will reside in that name. An acquirer will naturally be looking to acquire all of that goodwill and reputation, along with the IP. This essentially means that you are selling your name in connection with that business.

An acquisition would likely mean that any future business venture you wish to pursue will need to be under a different brand name unless the contractual terms of sale explicitly allow otherwise.

If the business is acquired in full and you no longer retain any interest or control within that business, it is also important to consider future reputational issues which may arise and be associated with the brand name (also being your name). For example, if a fashion business becomes associated with poor ethical practices, even though you would no longer be involved in the business, you must consider the reputational aspects for yourself of having ‘your name’ associated with that business.

There are lots of examples across the fashion and cosmetics industries of individuals who have set up successful businesses under their own names and then subsequently sold their businesses (E.g., Karen Millen, Bobbi Brown, Jo Malone, Liz Earle, Charlotte Tilbury). In most cases, the individuals go onto new (successful) ventures and so the use of their own name in connection with the business has had largely positive results.

However, there are instances which have resulted in less positive outcomes. One famous example is the wedding dress designer Elizabeth Emanuel.

Elizabeth Emanuel designed Princess Diana’s wedding dress and operated her business under the name Elizabeth Emanuel. She subsequently sold her business, signing over all of the rights, assets, the registered trade mark and goodwill in ELIZABETH EMANUEL (i.e., her name) to Elizabeth Emanuel PLC. This company then went into administration, and the trade mark was sold to Oakridge Trading. It took 25 years for Emanuel to finally be allowed to create garments and showcase them under her own name, but this wasn’t due to a Court win, this was down to an agreement between the current owner of the rights, Boi Group, and Emanuel. The Court held that as the rights to the name ELIZABETH EMANUEL had been legally assigned with her consent, she was not the legal owner of the trade mark – even though it was her name!

Karen Millen also ran into issues after she sold her majority share in the Karen Millen fashion business, Karen Millen Fashions Limited. The terms of the sale prevented Karen Millen (the individual) from using her name (or anything similar) in relation to a similar or competing business. Karen Millen (the individual) subsequently sought to use her name in relation to a homewares business, but the Court held she was unable to do so under the terms of the sale purchase agreement.

Charlotte Tilbury sold a majority stake in the Charlotte Tilbury business in 2020. However, she retained a share in the business and continued to play a pivotal role within it. This appears to be a good example of how use of an individual’s name for a brand can work well, even post-acquisition.

It is vital to obtain legal advice before agreeing to any contractual terms around the sale of the business and what this means in relation to the future use of your name.

Summary/Take homes

Using your own name as a fashion designer or fashion retail business can have lots of advantages and can result in very strong brand recognition and brand power. However, it is important to ensure that you think about the future direction of the business and always seek legal advice around (i) whether brand clearance is advisable or necessary, even when you are intending to use your own name; and (ii) in relation to any intended sale of the business, or contractual terms around investment.

It is also important to think about what your name means to you and whether you would ever be comfortable in handing over the rights to it to an acquirer of your business. If not, it would be sensible to consider the use of a variant of your name or a different brand name altogether.