A recent UK court held that Karen Millen, a fashion designer and co-founder of the Karen Millen brand, was prohibited from using her name, KM or K.Millen or any other confusingly similar names in connection with clothing and homeware.
Ms. Millen co-founded the Karen Millen brand in 1983 with her former husband. In 2004, the pair sold their majority stake in the brand to the company for £95 million. The terms of the purchase agreement contained various restrictions, including a restriction on the right of Ms. Millen to use her name to compete with the Karen Millen brand. These restrictions were intended to protect the company’s intellectual property.
In 2011, Ms. Millen indicated that she intended to use her first name to launch a new clothing line. She filed U.S. trademark applications for the marks KAREN BY KAREN MILLEN, KAREN MILLEN, HOME BY KAREN MILLEN, HOME BY KAREN, and (“KAREN X”) (collectively, “the Marks”) for various goods, including homeware and perfume. The application for KAREN X also covered clothing. Additionally, Ms. Millen petitioned to cancel the company’s U.S. trademark registrations for KAREN MILLEN. She claimed that she had consented to the company’s use of her name, but had not consented to the company’s registration of her name. On that basis, she alleged the registrations were acquired by fraud and should be cancelled.
Conversely, the company objected to Ms. Millen’s intended use of the Marks, claiming that use of the Marks would constitute trademark infringement and breach the 2004 agreement. Ms. Millen argued that use of KAREN MILLEN-inclusive marks would not constitute trademark infringement. She argued that, at the time of the agreement, the Karen Millen brand was used predominantly on clothing, not homeware, and that homeware did not fall within the ambit of the agreement. Ms. Millen also argued that the KAREN X mark was sufficiently different from the Karen Millen brand to avoid consumer confusion. To support this argument, she noted that there were other brands that included the name “Karen.”
The high court rejected Ms. Millen’s arguments and prohibited Ms. Millen from using Karen, Karen Millen, KM, K.Millen, or any other confusingly similar names, in connection with clothing and homeware. The court reasoned that, while clothing accounted for more than 90% of the company’s business, consumers would expect that the brand could be extended to other goods. The court relied, in part, on evidence of other fashion brands using the designer’s name on both clothing and homeware.
The court also held that Ms. Millen consented to the company’s use and registration of her name, because she had signed the consent form for the company’s first registration of the KAREN MILLEN mark. The court held that the consent signed by Ms. Millen in connection with clothing extended to use on related goods, including homeware. The court ordered Ms. Millen to provide the company with the necessary consent to obtain future trademark registrations for related goods.
This case shows the importance of contract drafting for both fashion designers and fashion companies. Specifically, designers who want to sell a branded line of clothing, should carefully consider future projects they may wish to do and the name or brand they may wish to use, and ensure that their contracts give them the freedom to do so. Companies wishing to purchase brands, on the other hand, should ensure that the contracts are drafted to protect their investment, and prevent designers from using confusingly similar names or trademarks on subsequent unaffiliated lines.