Buchalska Joanna, The surname as a trademark: ‘selling’ your identity in a fashion area. A comparative analyses between EU and US law

The concept of fashion law has emerged in the past few years in several forums. Most of the trademarks used in fashion law are created by designers who want their brands be based on their surnames.

However, problems arise with such trademarks when a company starts to have economic problems and decides to sell the trademark which is the same as the surname, or in which part of a surname was used. According to US case law, after selling a personal name trademark, the name-source may still use their name in commerce descriptively, not as a trademark, and in good faith. A case referred to below created a precedent on how to regulate agreements which, among other things, sell or grant the license to use a personal name trademark.

The European regulations seem to provide for a different solution. According to European case law, especially after the Nichols judgment, these trademarks are required to be judged in the same way as others. As a consequence it is possible to sell one’s own name as a trademark and lose the right to use it afterwards. This can easily be observed after the Karen Millen case in the UK Court of Appeal.

The questions which arise are as follows:

– where is the limit in using someone’s name as part of a trademark?

– how to regulate using someone’s name after it has been sold as part of a trademark or as a trademark?

This article tries to answer these questions.