In the words of the famous fashion designer, Coco Chanel, “In order to be irreplaceable, one must always be different”. But exactly, how different does one need to be? Our personal names (meaning, our full names i.e. John Smith) define us from the day that we are born so, logically, we believe that our names are our brands, and that we are naturally entitled to benefit from them commercially and otherwise.
But what does our law have to say about this? Our Bill of Rights provides us with the right to freedom of expression and the right to freedom of trade, which arguably, would include the right to use your personal name as a trade mark, as an expression of yourself, and to trade therein. Further, s1 of the South African Trade Marks Act no. 194 of 1993 (“the Act”) defines a “mark” as any sign which is capable of being represented graphically including, inter alia a name”. So it follows, that a name is capable of being registered as a trade mark. Further, s12 of the Act states that the Registrar may even require that a trade mark applicant obtain consent from the person or his legal representative, if the trade mark application consists of, or includes the name or representation of that person. Interestingly enough, s34 (2)(a) of the Act also provides for the bona fide use of your personal name, the name of your place of business, the name of any of your predecessors in business, or the name of any such predecessor’s place of business, as a defence to trade mark infringement.
Finally, as set out in para 3-49A of the South African Law of Trade Marks, “if a person has embarked upon his own programme of licensing his name or image in relation to goods through the use of a mark, it will be capable of distinguishing and thereby registrable as a trade mark”.
GUCCI Case - Italy
In a recent case, a court in Florence, Italy, had to determine whether the use of the TobeG mark by TobeG Srl, a Florentine handbags and accessories firm created by Guccio Gucci Jnr and Alessandro Gucci - the great grandsons of Guccio Gucci Snr (the founder of the leading fashion and accessories brand GUCCI), constituted infringement of the famous GUCCI trade mark. In this case, Guccio Gucci Snr spent 12 years at Gucci, where he built and developed the brand and sold it to the company - Investcorp in 1989.
The court found that the “illegitimate” use of the names “GUCCI” and “GUCCIO GUCCI” (albeit the name of Guccio Gucci Jnr) in relation to TobeG Srl’s marketing communications and website activities for their TobeG mark, constituted infringement of the famous GUCCI trade mark on the basis that it created an unfair association between the marks and therefore constituted unfair competition to the detriment of the GUCCI mark and the reputation therein.
This case highlights the importance of protecting your brand and carefully considering the sale of your brand name especially if it is your personal name, as the consequences (as illustrated) may have a ripple effect on generations to come.
The Jenni Button dilemma
Similarly, in a South African case (Jenni Button v Jenni Button (Pty) Limited and 4 others), Jenni Button (a well-known fashion designer) concluded a written sale agreement in which she sold her rights to the JENNI BUTTON brand together with the goodwill in the business carried on by Jenni Button (Pty) Limited. Jenni Button thereafter established a new clothing and fashion brand, PHILOSOPHY, but continued to use her personal name in connection with the PHILOSOPHY brand.
Jenni Button then raised the s34 (2) (a) defence (also known as the “own-name” defence) and argued that she could not be restrained from using her own name in respect of her business.
The court held that the JENNI BUTTON trade mark as well as all goodwill associated therewith, was validly transferred to the purchasers and that, her continued use of her name in relation to clothing amounted to passing-off. Further, that s34 (2) (a) of the Act required that the trade mark be registered, which it was not.
Use of your personal name in trade
Our law therefore provides for the bona fide use of your own name, provided that it is done honestly in the market place. Further, as held in the Boswell Wilkie case, “a person enjoys the right to the use and enjoyment of his own name in the conducting of business and sale of goods and that every person therefore has a prima facie right to honestly use their own name in conducting a business”.
However, where someone has gained a reputation within the relevant sector of the public, in that name, in respect of the same or similar goods or services (in this case, entertainment services) you will not be entitled to use your name in respect of those goods or services or rely on the use of your own name as a defence to trade mark infringement or passing-off proceedings.
Accordingly, the court held that Boswell Wilkie Circus had gained a reputation in the name “Boswell” in that the public associated “Boswell” with the Boswell Wilkie Circus, and that Brian Boswell could not rely on the “own-name” defence to passing-off proceedings instituted by Boswell Wilkie Circus. Brian Boswell was therefore restrained from using his own name in respect of the same or similar services carried on by Boswell Wilkie Circus, on the basis that the continued use of his name would lead to confusion in the minds of the public that he is in some way, connected or associated to the Boswell Wilkie Circus, which he was not. Brian Boswell therefore changed the name of his business to Brian’s Circus and continued trading under that name.
There is no question, that brands by their very nature are assets which are used and sold on a regular basis. However, perhaps a better trade mark protection strategy is to register your trade mark and then to licence your mark to interested parties. The benefits are two-fold, firstly you as the owner and Licensor will retain ownership and all rights in relation to the mark and secondly, you will benefit from the royalties paid in respect of the use of your mark.
Further, I would strongly recommend that the respective license agreements be reduced to writing (although this is not a formal requirement) as the written license agreement will then serve as proof of the terms of agreement between the parties, should any disputes arise between yourself and the Licensee.
In addition to the above, it is also very important that you ensure that you exercise quality control over the licensing of your trade mark. The reason for this being, that s10 (13) of the Act requires that a mark which by reason of the manner it is used, should not lead to confusion or deception in the minds of the public.
Therefore, in light of the Gucci and Jenni Button cases, it seems that more important consideration should be given to “saving” your brand for the generations to come.
Finally, as per the famous (abridged) quote by Socrates “Regard your good name as the richest jewel you can possibly be possessed of - for credit is like fire; when once you have kindled it you may easily preserve it, but if you once extinguish it, you will find it an arduous task to rekindle it again.”