Fashion history is filled with fashion houses and brands centric on one person’s or a family’s creative ideology, sense of self and identity to create not only a label but also a saga, for example, Christian Dior, Chanel, Calvin Klein, Gucci, Louis Vuitton, Kenzo etc. But these stories do not always have a happy ending.
Looking deep into the fashion industry there have been endless tales of designers having to walk out of their labels, irrespective of their personal ambitions and desires, “nameless into the night leaving behind their name”.
While a designer definitely is a large force behind the success or failure of the brand, the name on the label - its trademark is the primary asset in the fashion world.
With the rising trend of mergers and acquisitions in the fashion world, It becomes very important to understand what exactly is at stake when you choose your “identity” to be your brand name.
In an article by Fashionista, the writer went to great lengths to discuss the tragedies behind this particular phenomenon. According to the writer, while the fashion industry concerns itself with the creative aspects, it remains to be very much concerned with profit-making.
While the designers surely take away most of the credit behind the success of a brand, the investors are the ones spending huge sums of money to make these enormous projections into reality. Accordingly, the designer can easily be reduced to a mere employee of the fashion house, despite it being in his or her name quite “literally”.
Seems like Netflix, is aware of this particular phenomenon haIt seems been representing it with its latest season of Emily in Paris and the tragedy that befell, Pierre Cadault. The fictional designer’s story seemed quite similar to what happened in the case of the couture brand Halston and its infamous designer Roy Halston Frowick, who was fired from his own namesake brand after he lost all the decision-making rights for his brand. Another Netflix series, to binge on for all the fashion industry buffs.
The downside of bringing personal connections or relations into an eccentric field such as fashion often leads to various scandals but the most painful is perhaps being derived from your own creation and the right to use your own name.
Tragic Tales of Designers Losing Their Names
The most popular case law regarding this situation originates from the UK in the case of Elizabeth Emanuel. Elizabeth, who was a talented designer and one of the personal designers for Princess Diana Spencer, set up her own company under her name ‘Elizabeth Emanuel’ but soon had to sell the business as well as get embroiled in a nasty trademark suit with the buyer.
Through a series of assignments, the registered intellectual property along with the associated goodwill of the brand ended up in the hands of the company Continental shelf. The company filed an application for the trademark “ELIZABETH EMANUEL” which was opposed by Ms Elizabeth, the designer.
The aggrieved designer’s case rested on the fact that the use of the trademark “ELIZABETH EMANUEL” by a third party person would lead to public perception that Ms Elizabeth was in some manner involved in the creation of the garments and hence affected consumer buying decisions. On the other hand, the defendant claimed the rights acquired by him honestly by the virtue of the sale of the business and the legitimate assignment of the goodwill and intellectual property.
The matter was then appealed before the European Court of Justice, the court came to the conclusion that the name “Elizabeth Emanuel” alone could not be regarded as such nature as to deceive the public. It was denoted that even though a few members of the public might perceive the contribution of Ms Elizabeth to the creation of the products, the characteristics and qualities of the products would continue to be guaranteed by the owner of the trademark.
Lastly, the ECJ commented that the grounds for revocation of a registered trademark are the same as the grounds for refusal of registration. Since there was no reason for the refusal of the application of registration on the part of Continental shelf, there was no reason why the duly registered marks which had been legally assigned to the buyer together with the business were allowed to be revoked.
However, it is very important to denote the fact that Ms Elizabeth continues to work as the designer and the owner of “Atelier by Elizabeth Emanuel”.
Unless there exists a contractual restriction to the contrary, the courts in the UK have been quite flexible with providing a wider berth to the designers to continue using their personal name as their brand, as long as it is not exactly identical to a registered trademark.
There have been other cases as well wherein personal names of designers and artists have come into conflict due to being similar, despite pertaining to separate persons such as the case of Katie Perry versus Katy Perry as well as the case of Kylie Minogue versus Kylie Jenner.
Global Trademark Laws for Personal Names
It is also interesting to know that different countries have different legal regulations when dealing with personal name brands.
In Brazil Section 124, XV, of IP Law specifically provides against the registration of personal names, family names or patronymic names as trademarks unless consent has been obtained from the person/persons concerned and in the case of a deceased person, from the family members or legal heirs of such person.
In Germany as well, personal names are protected under § 12 BGB (Bürgerliches Gesetzbuch – Civil Law Code) and can be registered as trademarks according to § 3 MarkenG (Markengesetz – Trade Mark Act). The Mark may be constituted of only a part of the name i.e. the first name, the surname or both and would be eligible to be registered. However, one is not entitled to such trademark protection with regards to marks already registered, deceptive similarity and other general grounds which apply as per the trademark law.
Accordingly, German Courts place a lot of importance on the distinctiveness of the names to be registered as trademarks, as there are
several situations wherein one tries to register their full name (i.e. both the first name and the surname) but is denied because the surname is already registered by another person. The German Courts are of the opinion that the first names are not distinctive in nature and can therefore create a deceptive perception in the minds of the people regarding the right holders of the marks. However, in cases where the first names along with the surnames are exceptionally distinctive and create a distinct overall impression (for example when a celebrity status or a public figure might be involved), the name will be registered as a trademark, despite a surname already having been registered as was established in the cases of Barbara Becker versus Harman International Industries Inc.
It is interesting to know that till 1999, personal names and surnames were prohibited in India from being registered as Trademarks. However, the Trademarks Act, 1999 omitted the provision barring such registration making it possible to register one’s name as a trademark.
However, the story does not end here. In a populated country such as India, common surnames can be registered and accepted as trademarks, if it is proved that the name or mark has acquired distinctiveness or alternatively under section 12 of the Act, one may prove honest, bonafide and concurrent use of the trademark. Herein, a mark which is identical or similar to a pre-existing or registered mark can also be registered if the applicant can prove that due to honest, concurrent and continuous use, it has obtained a separate distinct recognition or character, making it feasible for it to co-exist with the prior mark or user.
Another interesting aspect is the relation between bonafide and concurrent use of trademarks with relation to section 35 of the Act, which prohibits any interference in the bonafide usage of a trademark by a person (not having the proprietorship over the registered trademark) but having the same name or name of place of business or both by the person who holds the proprietorship over such a mark.
The issue was discussed in the case of Precious Jewels & Anr. vs. Varus Gems by the Hon’ble Supreme Court and it was decided that the defence of section 35 would be available to a bonafide user.
Despite the legal risks discussed above, designers continue to use their personal names to establish their brands in the fashion industry. This is because it is much easier to promote the label when there is a personal connection or a human element involved.
However, according to the experts, that is only possible when the designer has a distinct and enigmatic character and style with the ability to capture the audience’s attention and love. The designers with the namesake labels can, however, follow up in the shoes of Donna Karan, who then took her company public in 1996, and assigned her IP rights to a separate holding company by the name of Gabrielle Studio, which licensed the IP rights to Donna Karan International (the public company) and received a licensing fee for the same.
With the current trend of fashion acquisitions and mergers in full swing in both India and abroad, I hope this serves as a great read for all the upcoming designers and undiscovered talent.
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