Can you trademark your personal name? Listen in as we bust some common myths in this area of law and discuss the benefits, risks and issues in using your personal name in your branding with our resident trade mark specialist Grace Yi.
- Why are we talking about this?
- Why trademark your personal name?
- Kylie versus Kylie
- Protecting your mark doesn’t stop at registration
- Challenges and risks in trademarking a personal name
- So, should you trademark your personal name?
Joanna: Hi it’s Joanna Oakey here and welcome back to Talking Law, a podcast brought to you by our commercial legal practice — Aspect Legal.
Now today we have the fabulous Grace Yi back here from Aspect Legal to talk to us all about trade marks. Hi Grace, welcome back.
Grace: Hi Jo! Good to be back.
Why are we talking about this
Joanna: Great! Well look, we keep talking about trade marks because our listeners keep saying, “We’re really interested in trade marks!” Today we thought maybe we would chat about something that’s come up recently in the practice that related to the concept of trademarking your personal name. So Grace, what happened here? We had a client with a business using their own name who wasn’t sure if there was any usefulness in protection.
Grace: Yeah, that’s right. It actually came off the back of a podcast we’d sent out about how important it is to think about trade mark protection and then once we started talking it turned out that the reason why she’d never sort of turned her attention to trademarking was because she was actually trading under her personal name.
It was interesting because she hadn’t ever thought that you could trademark a personal name so that’s where this podcast is coming off the back of that conversation.
Joanna: Fabulous! And I guess this is where it can be really valuable for our listeners because trade marks is such a nuanced environment. Isn’t it? I mean we have been doing this for many many years and we still get surprised from time to time by new things that come up. Right?
It’s fair to assume that our listeners probably really aren’t across all of these issues and I think each time we traverse a new topic like this it gives us the ability to give a bit of information both to our business owners who are listening and our business advisors like for example accountants who are listening in, so they can be aware of some of these things that sometimes are myths in the background like for example that you can’t trademark your own name.
Let’s get started. Grace, maybe if you can just give us a really quick run through of why it is that someone might consider trademarking their own personal name.
Why trademark your personal name
Grace: Yeah, so just to remind everybody that a trade mark is essentially a symbol which differentiates one trader from another in the marketplace. If you get back to basics as to what a trade mark actually is, then if you think about it a person’s name of course we know lots of famous people who have trademarked their name and it becomes a brand which is very valuable.
I had a bit of a think about all the famous brands that we know, all the registered trade marks we know of that were actually people’s names. Brands like Jimmy Choo, Chanel, Morrissey, Kate Spade, Dick Smith, Don Bradman. And interesting, Don Bradman, he’s actually, there is a trade mark for his signature.
Joanna: Is it? Gosh! How about that.
Grace: Yes, as an image. There you go. I don’t know if anyone else out there would want to get their signature registered as a trade mark, but it falls in the category of an image trade mark. So you can see that all these people who are quite famous have recognized the value of protecting their personal name as a trade mark.
Joanna: And I guess in some of these instances that you’re talking about, so say for example the Kate Spade and the Dick Smith and the Morrissey and the Chanel, each of these names have become synonymous with a particular type of product or in the case of Dick Smith a retail chain, that sometimes people still connect in their minds the people with the mark which relates to the business. Quite often particularly newer generations who don’t have a connection to the history behind a particular mark will see these names as a mark itself so it completely makes sense, right?
And I even saw, obviously there’s been a bit of publicity recently in relation to Kate Spade. But we saw stories in the media about how she had sold the business and so Kate Spade was no longer part of the Kate Spade business. Same for Dick Smith.
I guess this introduces this interesting concept that trade mark protection, whilst you might be thinking of your business bearing your name or elements of your name at the moment being connected to you, maybe there might be a point in time where the business still continues under the name or the component of your name even when you’re no longer connected to it.
Grace: Yeah, that’s right and just as you were speaking just then. Two thoughts and I’ve got to try and make sure I don’t forget the two thoughts.
Joanna: I know the feeling!
Grace: What you just said about how we associate these brand names, these individuals names with a particular brand. That’s exactly what a trade mark is. These words develop a secondary meaning.
Kate Spade once upon a time wouldn’t have been a brand. She was just a person. And the name Kate Spade wouldn’t have meant anything other than just her individual name. But over time, as it has developed a goodwill and reputation behind those words as a brand, it develops a completely different, what should I say, the words carry a different meaning.
Joanna: They do.
Grace: That’s the whole reasoning behind trade mark registrations. It’s that that we’re trying to protect.
By registering a person’s name as a brand, you’re really then protecting those words and the ability to prevent other people from using a trade mark that might be quite similar. So perhaps by having Kate Spade, she’s then got a monopoly over that name in relation to whatever products or classes she’s registered it in. And interestingly there was, in the media, it was reported Kylie Minogue had an issue in the States.
Kylie versus Kylie
Joanna: Yes! I recall hearing about that. What happened with that matter Grace?
Grace: Yes. Our own Kylie had to go and have a bit of a dispute with Kylie Jenner.
Joanna: Right. Well there you go. Okay, that sounds interesting.
Grace: The issue there was that Kylie Minogue has protected the word “Kylie”, so just the first name “Kylie”. She’s got rights in the name “Kylie” and Kylie Jenner also wanted to register the name just “Kylie.” And so Kylie Minogue had to oppose it and they settled it out of court. But it just goes to show that you can be as famous as Kylie Minogue and you still have to be very active and proactive about protecting your trade mark rights because Kylie wants to have a monopoly over that first name, Kylie.
Protecting your mark doesn’t stop with registration
Joanna: Yeah, which I guess introduces, I’m glad you say that because that introduces another point which is this importance of understanding it’s not just about the registration, it’s also about actively pursuing and protecting your rights in this area in order that you continue to achieve monopoly rights and monopoly protection in relation to your mark.
You have to be willing to go out and take action. And take action doesn’t necessarily mean litigation, because I guess this is one thing that we should make clear. Quite often we have clients who are saying “We don’t want to get involved in the court system. We don’t want to sue.” To which we might say, “Yeah, I think that’s a good approach.” We don’t necessarily advocate involving the courts.
There’s a lot that you can do outside of simply suing someone and there’s a lot of steps that we can take to try and stop people from using similar marks. But the point is you really have to be clear about the reasons for your registration and if it’s because you want that monopoly right into the future, then registering often isn’t enough. You really need to also just make sure you take action if you find people who are using similar marks in relation to the types of services or goods you’re providing.
Grace: That’s right. And so that’s another good reminder that once you’ve got a trade mark registration, you can’t just sit on your laurels and think that everything’s fine. You’ve got to keep your eye on the market and be proactive about making sure that you stop other people from using something similar. No one else is going to do that for you.
Joanna: Yeah, absolutely. So we’ve talked a bit about why you would consider trademarking your personal name. I guess one thing we didn’t add in there is if you might want to license your name and someone might say “Why the hell would I want to license my name?”.
Joanna: But I guess if we come back to these examples that we’ve talked about where the name has become associated with a brand for a good or service or your business, then that might be something that you might want to license into the future.
Grace: That’s right. We know a lot of celebrities now have perfumes under their name. We associate Jamie Oliver with frying pans and I’m sure he’s not manufacturing them himself directly. There’s somebody else in that chain that is actually doing that for him and he needs to then be able to license that name so there you go. That’s why you would want to license it.
Joanna: Absolutely. And I guess just to tease that out a little bit more I guess we didn’t make it clear that in order to license a brand to someone else, you need to have a trade mark registration. You can’t deal with that without a registered trade mark, because that’s the way intellectual property works.
Okay, so why don’t we just touch Grace on perhaps what some of the issues are with trademarking a personal name.
Challenges and risks in trademarking a personal name
Grace: Yeah. I guess some of the points are that trademarking a personal name it has to pass exactly the same tests as any other trade mark application. It needs to be registerable and satisfy the Trade Marks Office.
Joanna:Yeah. Let’s talk about those. Like what is, and I know we’ve talked about this before. If you’re interested in hearing more about trade marks, just go back through our previous podcasts and you’ll find quite a few episodes there where we’ve talked about trade marks. In some of those episodes, we really sort of step out each of the elements of registrability.
But Grace, maybe you can give us just a quick summary again just for people who need a reminder or don’t have time to go back to those other episodes.
Grace: Sure. The two main tests that a trade mark application needs to pass is that it needs to be sufficiently different to everything else already on the register. The Trade Marks Office isn’t going to accept it if you’re infringing somebody else’s rights. That’s the main first test.
And then the second main test is that it needs to be sufficiently distinctive. When we say distinctive, and as you say we’ve talked in a lot of detail about what that means. But just in a nutshell, it needs to not be descriptive of the goods or services that are being provided under the brand. Interesting questions when it comes to trade marks, how those tests apply.
Joanna:Yeah. And what are some of the risks, I guess, if someone is using their name or part of their name as part of their brand for their business or goods or services and they don’t protect it?
Grace: Yeah. It comes then to thinking about what is the point of getting it trademarked. And I guess one of the risks then of using any brand is that you might be using something that’s too similar to somebody else’s.
If your name is Kylie, and you want to start selling I don’t know, some of the products that Kylie Minogue has got protected, it’s possible that she might have an issue with that. Because she’s got the word Kylie protected for certain things. Like anybody out there who’s trading, it’s always important to get this checked out before you start.
Joanna: Absolutely, and I think this is the element, and we repeat it like broken records time and time again. But it’s just because we are the ones who see you guys come in with the war stories. We see so many of the war stories and it just comes back to the fundamentals.
Number one, before using a mark, make sure that no one else has the rights to it. Make sure you’re not going to be infringing someone else’s rights.
And number two, think about whether or not you want to protect your rights in that mark. If you think it might be something that is an asset for you or your business into the future, then certainly you need to think about registration in order to provide you with that protection.
Good. Okay. What’s our summary then Grace? What’s our one-liner that our listeners can take away if they’re trying to work out, I guess the first question is should they brand their business with their own personal name? But if they do?
So should you trademark your personal name?
Grace: It’s not always necessarily the case that it’s best to brand your name with your personal name. You touched on it before. Because a business is separate to who you are, it could become the case that the business is no longer yours. In which case, you may lose the rights to that particular brand which happens to be your personal name so it’s something to take into account and something that should be considered in each individual case.
Joanna: In the branding process.
Grace: That’s right.
Joanna: But if you have gone ahead and you have your business or your product or service now inextricably linked to your personal name. You’re happy with that as an approach. Then I guess we’re saying, it could be really useful for you to consider the concept of protection.
Joanna: And I think I would probably say we wouldn’t always recommend registration. I think it’s one of those things that is on a case by case basis I think. Would you agree, Grace?
Grace: Yes, yes. Absolutely. These podcasts are information only.
Joanna: Oh that’s a good point. We should throw in a disclaimer there. Don’t rely on this information without getting a bit more tailored advice in relation to your own situation.
But I guess just wrapping up. It’s a really interesting point. Certainly it touches on many issues that I think are really good for everyone to remember about being careful about the use of and protection of marks in a business.
But busting the myth that personal names can’t be registered. We’re saying you’ve heard it here many personal names can sometimes not always can sometimes be registered and sometimes it’s a good thing to be looking at.
Grace: That’s right. It doesn’t prevent it just because it’s a name.
Joanna: Yeah, that’s it. Exactly. Well look thank you, Grace. Thank you so much for your time as always coming and chatting to us.
And to you the listening audience, if you’d like more information about this topic about trade marks as a whole, then head over to our website at talkinglaw.com.au where you’ll be able to see a transcript of this episode if you’d like to pick through it or alternatively there or on our website at aspectlegal.com.au, you’ll be able to find a booking link to enable you to book a free 15 minute discussion with Grace or any of our legal eagle team to talk about trade mark matters if there’s something that you’ve got on your mind after hearing the things that we’re talking about today.
And look finally, if you enjoyed what you heard today, then please pop over to iTunes and leave us a review. We’d be ever so grateful.
Well look thanks Grace.
Grace: Thank you.
Joanna: Thank you. And thanks again to you the listener for listening in. You’ve been listening to Talking Law, brought to you by our commercial legal practice — Aspect Legal. See you next time!
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