Owning your Name - The Importance
of Trade Marks in Business
“What’s in a name? That which we call a rose by any
other name would smell as sweet.”
(Romeo and Juliet)
Shakespeare may have known what he was talking about in his own time,
but in the increasingly competitive fashion world, a name means money – lots
of it. The recent dispute between Kiwi fashionistas Trelise Cooper
and Tamsin Cooper demonstrates how seriously we should take our use
of names in business.
On 3 July they announced a ceasefire in their 20 months legal
dispute over Tamsin Cooper's use of her name on the accessory
and clothing items she designed. The dispute began when Trelise
Cooper objected to the registration by the Intellectual Property Office
of New Zealand of Tamsin's trade mark, which was a combination of Tamsin's
name and an accompanying flower motif. Trelise claimed there
was close similarity to her trade mark with the similar names and use
of a flower motif. She also said this was misleading and deceptive
conduct under the Fair Trading Act.
It became apparent over the next few months that this battle would
be fought out in the public relations arena rather than the Court. The
media dubbed it a battle of David and Goliath – Trelise's business
being worth $15m per annum and Tamsin's worth $250,000 in annual turnover. The
sympathy vote went to the underdog after vigorous campaigning. The
parties recently reached a "settlement", with Tamsin's lawyers
claiming victory.
This apparent victory may leave other business people wondering why
they should bother with trade mark protection if this is the outcome.
Trade Mark protection is critical, but it should be remembered that
not all marks can be registered and there are limits to the protection
it can give.
A trade mark must distinguish the goods or services of one person
from those of another. People's names, on their own, are not
easily registered and there is greater tolerance of people using a
similar mark, if they can claim that they are only using their own
name. This is because it is accepted that by permitting one party
to register a common name the law could prevent competitors from being
able to operate at all in many industries. The high fashion industry
is a particularly good example where the name of the designer is everything.
In many ways, the real protection for all businesses comes not with
the Court action, but in the deterrent effect to other businesses. Tamsin
Cooper went through 20 months of increased costs and energy in fighting
Trelise. In her case, it has probably paid off with greater brand
awareness of her label but it remains an issue whether this made up
for her down time and the cost.
If this argument had proceeded to Court, the outcome could have been
disastrous if the decision had gone against Tamsin but her clever use
of publicity may have saved her.
There are strong business arguments in favour of having trade marks
protected, particularly in an industry such as fashion, where everything
is in the name.
For more information please contact:
John Ferner
Partner
t +64 9 979 2153
e: John Ferner
Last updated: July 2007
This article is intended to be brief in nature and should be used for information only. It should not be relied on as legal advice.
This Article was originally published in Manukau Focus. |
