Many famous brands have their origin in the surname of a founder of the business: Selfridges®, Myer®, Givenchy® and Harrods® to name a few. These trade marks are now first and foremost associated with the businesses of the men who founded them, but once upon a time, Mr Selfridge and the others were just bright-eyed entrepreneurs, with no reputation, each trying to make an impression by using their name to distinguish their products and services in the market. History shows that these men were very successful, but it was a risky brand strategy to adopt!

The rules

It’s fundamental to trade mark law that the ‘origin’ of a product or service can be associated with a particular trade mark. When applied to particular goods or services, if the trade mark has an element of uniqueness to it – known as ‘distinctiveness’ – then the owner of the trade mark can acquire the right to stop others using that trade mark on their similar products or services. It follows that if a trade mark is not distinctive for particular products or services, then no exclusionary right should be possible. Of course, what is distinctive is not always clear cut, and so the law has adapted to soften the hard edges of these rules.

A surname can be a ‘good’ brand

One factor in determining whether a trade mark is distinctive is whether other people might have a legitimate reason to adopt the same trade mark. Using your surname as your brand is a very legitimate way of evoking the most personal and direct connection between your product and its origin. From a marketing perspective, this is a very good reason to use your surname as your brand.

But, when other people have the same surname, and are equally entitled to use their own name to indicate the origin of their product, the risk you run is that you will be unable to obtain the exclusionary protection afforded by trade mark law. Without that exclusionary protection, the competitive landscape is much rockier.

Knowing what you have to do

If you choose to adopt a surname as your brand, and you want to have all the benefits of trade mark law on your side, here are some factors you’ll need to take into account:

  • The Australian Trade Marks Office has a mechanism for determining just how distinctive a surname is. If a surname occurs on the Australian electoral roll more than 750 times, then it is questionable whether it is capable of being distinctive.
  • If your product or service is a commonplace one – a café, clothing or retail outlet – then using a non-distinctive surname is going to be especially risky. If your product or service is more obscure, then the risks are much lower.
  • If your surname is a common one, and your new business involves popular products or services – don’t despair. You’ll need to be really committed, but if you can prove that, through heavy advertising and sales, your business has developed a strong reputation, i.e. the surname has become strongly associated with your business, then the protection of the law may be achievable.
  • In the case of very common surnames, ‘heavy’ means many years of widespread and high volume use before you seek trade mark protection.
  • If someone else in the past developed a strong reputation for their business using your surname, the residual power of that reputation might prevent you from starting your own business under the same name. Once a surname is recognised as a brand, the law can protect it well.

Talk to us early when you are strategising!

Surnames can become powerful and valuable brands. But getting the protection of trade mark law around them can be tricky – and expensive. The best approach? Talk to us early in your brand development process about ways to leverage a surname for long lasting success.