Brand Names are valuable assets, and as a branding lawyer I often get asked to advise if you can register your own name as a trade mark. Trade marks give you ownership over the name and you can stop others from then using it for the same or similar goods or services that it is registered for. Bearing this in mind it’s an important question.
People often wish to use their names as brand names.
Think Elle McPherson, Kylie Minogue, Ian Thorpe, Lleyton Hewitt, Roger Federer, Andre Rieu, Beyoncé and Tiger Woods. All of these celebrities have registered their names as trade marks.
Even a simple first or surname can be monopolised eg SMITHS for Chips.
In the clothing area, Sussan Corporation (Aust.) Pty Ltd has registered the name SUSSAN for clothing in Australia.
Can you use your own name if someone else “got there first”?
The short answer is – someone can register a name as a trade mark and stop others from using it.
However, it all depends on what the brand name is and how close the goods or services are to one another.
For example, even though Gold Coast based company, Mischa Accessories, tried to stop actress Mischa Barton from trade marking her name in Australia she has still been successful and has had her name registered for clothing and back packs. Had they both tried to register exactly the same name (e.g. Mischa) the result might have been different.
The name HARRY POTTER was also the subject of a dispute in the Federal Court. A clothing business based in New South Wales used the name for a line of clothing with 17 stores in New South Wales and Queensland and filed a trade mark application. J K Rowling’s fictitious character was also introduced into the Australian market around that time but in the context of books. Today, the names are registered for clothing by Pretty Girl Fashion Group Pty Limited and also by Warner Bros. Entertainment Inc. for a vast array of goods and services including entertainment services. It was lucky that the Australian company had applied to have their trade mark registered back in 1998 or the result might have been different.
So – what does all of this mean to you?
When choosing a new brand name, 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. If you are already using your own name as a brand it is wise to consider trade mark protection.