What's in a name?

In Romeo and Juliet, one of the classics by William Shakespeare, Juliet uttered a sentence which has since transcended time: What's in a name? Indeed, many of us do not choose our names, and parents/guardians can be inspired by grandparents to football teams.

Earlier this month, a mother experienced some issues when applying for her child's passport.

The Passport Office initially mistakenly refused her application on the basis of the name of the child, Khaleesi, inspired by the name of one of the lead characters on the show Games of Thrones, and requested a letter of consent from Warner Bros, who owns the trademark.

Closer inspection revealed however that the trademark owned concerned Goods and Services only.

The Passport Office has since apologized and processed the application.

So clearly, there is a lot in a name when it comes to Intellectual Property Law. In cases concerning eponymous brands, as is the case with many fashion designers, it is important to consider the legal elements well. The UKIPO (United Kingdom Intellectual Property Office) will consider applications for trademarks which include first names, surnames or both, except those of members of the Royal Family.

In some cases, an application to register your own name may be refused if there is an existing earlier registration for the same or a similar mark, as was the case in Tiffany and Company (‘Tiffany & Co.’) v Tiffany Parmar ('Ms Parmar')?(O-010-20).

This decision highlighted the approach of the courts in that there is no absolute or superior right to register one’s own name as a trademark, whether that be a forename, surname or full name. A closer inspection of the laws related to registered trademark infringement (Section 11(2) of the Trade Marks Act 1994) and the common law tort of passing off recognise what are known as the ‘own name defence’ and the ‘concurrent right to use of one’s own name’ respectively. The courts also explored the 'honest practices' around the use of a name and concluded that intentionally using a misleading name will not be permitted as explained in the case of Hotel?Cipriani?Srl?v?Cipriani?(Grosvenor Street) Ltd, [2010] EWCA Civ 110, [68-69]. This defence was also discussed in Maier & Anor v Asos Plc & Anor which revolved around Article 12 of the Community Trademark Regulations.

Therefore, if you are thinking of using your name commercially, you might want to read the commercial agreements in relation to the use of your name well and avoid situations similar to those in Millen v Karen Millen Fashions Ltd & Anor [2016] EWHC 2104 (Ch).