The comedian formerly known as Joe Lycett has changed his name by deed poll to that of German fashion house HUGO BOSS, in a stunt designed to highlight the often ‘David v Goliath’ nature of trade mark battles. Here, trade mark and brand expert Sharon Kirby explores whether he’s right to take this stance from both the angle of big brands protecting their reputation and smaller start-ups being left out-of-pocket.

A delicate line

Often, there is a delicate line to be taken between the robust policing of a client’s trade mark portfolio and the negotiation of co-existence agreements with new businesses wanting to trade under a close or similar name. It goes without saying that, where a considerable amount of money and effort has been invested in a brand, brand owners will want to (and have a right to) protect themselves.

While there are a handful of wealthy companies out there known for a somewhat overly-enthusiastic sending of cease and desist letters, it should also be borne in mind that anyone launching a new business or brand should at least try to avoid any obvious conflict. I expect that it’s rare for someone to buy a house without conducting a survey or knowing the extent of its boundaries — in the same way, businesses should look to conduct professional clearance searches to highlight any obvious problems.

On the other hand, the aggressive point-scoring enforcement practices of certain brands can go well beyond a practical, real-life compromise — something which frequently frustrates large swathes of the profession as well as the general public.

Trade mark infringement: explained

Trade mark registrations can be infringed by a third party using an identical or similar mark on identical or similar goods to those protected by an earlier registration. Often, more widely known brands want to extend that protection to goods and services beyond those which are similar, but in which they can show that their mark has a reputation.

In the US, there’s a legal concept of trade mark dilution — an understanding that a trade mark owner wants their brand to stand out in the market without it being diminished by someone else using the same name for different goods, which can weaken the uniqueness and attractiveness of the brand.

A reputation challenge is the closest concept that we have in the UK, but brands here face additional hurdles to take action on this ground, including the need to show that the later adopter of the similar mark is trying to ride on the original owner’s coattails.

Dishonest practices — Joe Lycett v Joe Lycett

Back in the 1920s, a case found that a Mr Winocour, who had set up a moneylending business under the name R Harrod Limited, had done so fraudulently, with the intention of trading on the back of the famous store. For a time, an ‘own name defence’ existed, which allowed companies in the UK/EU to continue using a name even where another party had acquired a trade mark registration — as long as it could be shown that the company had set up and been using its name in accordance with honest practices.

Recent changes in EU legislation, now in place in the UK, limited that defence to natural persons (individuals) and removed the defence from legal persons (such as companies). It’s unclear whether the recently renamed individual Hugo Boss will try to sell any goods under this sign, as threatened as part of his new Channel 4 programme ‘Got your Back’. However, given the circumstances, he’ll have a tricky time proving that any goods were brought about in accordance with honest practices.

Meanwhile, I wonder how the new Mr Boss would react if fellow comedian Rhys James actually followed through on his threat to change his name to Joe Lycett in a bid to improve ticket sales. Could the new Mr Boss look to stop a ‘Joe Lycett’ tour with a claim founded on his own reputation, in his former name, under a residual passing-off claim? Surely, with his championing of the underdog, he wouldn’t dare…