The names of famous people are not outlawed

Trademarks

Written by Peter Simonis

Sometimes the use of names as a brand can be a tricky business. For instance, it is not allowed to use the names of celebrities. Even those who want to use their own name as a brand, should be careful before applying for a trademark.

Recently a judge on appeal confirmed that well-known Dutch fashion designer Roy Donders lawfully objected against multiple applications on the trademark “Roy Donders” by another party. Roy Donders was already a public figure during the time of application and the mark applicant therefore acted in bad faith. This made his application void. After the verdict, Roy Donders registered his name as a trademark.

Registration makes protection easier

Also without registration, names of celebrities enjoy protection. Yet, it would be wise for celebrities to have their names registered as it makes it easier to defend against the use of others. Many public figures and celebrities have registered their names as trademarks, like Geert Wilders (a Dutch politician), Björn Borg and singer Kylie Minogue. She recently won a case versus reality TV-star Kylie Jenner, who wanted to register the name “Kylie” as a cosmetic brand.

Anyone may file a trademark application for their name. In order for it to be honoured it is important that said name differentiates from the products it covers.

Peter Simonis - Trademarks & Designs

Own name as a trademark

Anyone may file a trademark application for their name. In order for it to be honoured it is important that said name differentiates from the products it covers. As this is easily achieved, many famous brands use names such as Chanel, Hugo Boss and Yves Saint Laurent. These names do not have a relation with the products behind these brands. What if there is in fact a relationship? Then the name does not have distinctive power and is not valid. Therefore it is not possible to use the name “Baker” as a trademark for bakeries.

When is it a matter of infringement?

When a name is registered as a trademark, others may still use the same name; just not as a trademark. But when is that the case? This was first defined and clarified in 2007, when the highest European judge ruled in the case Céline vs. Céline. The plaintiff was owner of the registered clothing brand Céline, while the defendant called his clothing store “Céline”. The judge ruled that there is a trademark infringement if consumers would see a connection between both names and might doubt the origin of the products. To conclude: whoever is named Coco and wants to use it as a trademark, should think twice about starting a perfume line.