It is a common misconception that we are all entitled to create brands under our own names. It is also a misapprehension that it is always a good idea — from either a commercial or a personal perspective.

What are the barriers to using your own name for your brand?

If somebody else has already used your name (or a similar name) in the same market as you, there is a chance that you will be prevented from naming a company or a line after yourself. This is because the UK Trade Marks Act 1994 provides that a trade mark is not infringed by the use by a person of his own name only where the use is in accordance with "honest practices in industrial or commercial matters".

In deciding whether you have adhered to "honest practices", the court will take into consideration the following factors:

  1. whether the defendant knew of the existence of the trade mark, and if not whether it would have been reasonable for it to conduct a search;
  2. whether the defendant used the sign complained of in reliance on competent legal advice based on proper instructions;
  3. the nature of the use complained of, and in particular the extent to which it is used as a trade mark for the defendant's goods or services;
  4. whether the defendant knew that the trade mark owner objected to the use of the sign complained of, or at least should have appreciated that there was a likelihood that the owner would object;
  5. whether the defendant knew, or should have appreciated, that there was a likelihood of confusion;
  6. whether there has been actual confusion, and if so whether the defendant knew this;
  7. whether the trade mark has a reputation, and if so whether the defendant knew this and whether the defendant knew, or at least should have appreciated, that the reputation of the trade mark would be adversely affected;
  8. whether the defendant's use of the sign complained of interferes with the owner's ability to exploit the trade mark;
  9. whether the defendant has a sufficient justification for using the sign complained of; an
  10. the timing of the complaint from the trade mark owner.

Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) [2011]

In order to adhere with "honest practices" you should, as a starting point and at the very least, conduct a search for the use of your name in the relevant market and reach out to any relevant trade mark owners to provide them with the opportunity to object to your proposed use of your name.

Why might you avoid using your own name for your brand?

Apart from the difficulties associated with registering your own name as a trade mark, the long-term repercussions of doing so should also be borne in mind. You may be prevented from using your own name in relation to your future business ventures where these are in the same field as a company you previously branded with your own name.

Kate Spade made the decision, after selling her shares in the Kate Spade brand, to change her legal name to Kate Valentine. Kate was of course free to use her name in relation to herself personally and in a non-commercial capacity despite being no longer associated with the Kate Spade brand. However, the decision was reached, according to Kate, for commercial reasons and in order to completely distinguish herself, Kade Spade the person, from Kate Spade, the brand.

Her decision is sound from a legal perspective too. Under the Trade Marks Act 1994, a person infringes a registered trade mark if, without consent from the proprietor, he uses in the course of a trade sign:

  1. which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered;
  2. where because (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the sign is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public (which includes the likelihood of association with the trademark); or
  3. which is identical with or similar to the trade mark and is used in relation to goods or services which are not similar to those for which the trade mark is registered, where the trade mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage.

Kate's legal name change therefore enables her to circumnavigate any potential infringements upon the Kade Spade trade mark which may have arisen as a result of promoting and marketing her new handbag line – Frances Valentine – (which is clearly in the same market as her previous line) under the name Kate Spade.

Such action is a statement of the pitfalls of tying your personal identity up with your brand identity – and the potential for losing both.