Recent high-profile disputes involving family names and brand ownership have brought renewed interest in protection of names. The question then arises: how does one really exercise control over a name? #
When discussions about commercial value of a personal identity happen, questions about ownership tend to surface quickly. For public figures, celebrities and influencers, a personal name forms their brand identity on platforms, promotional material and products. From a legal standpoint, names are more vulnerable than many expect.
Understanding the protection naming rights offer and their role in a broader Intellectual Property (IP) strategy is critical for brand development and security around a personal identity.
What are naming rights? #
Naming rights, as such, are not standalone legal rights. They help exercise control over the commercial use of a name through layered legal protections.
Businesses regularly conflate use with registrability, assuming that commercial or social use of a mark is sufficient to secure protection. Trade mark protection is afforded to marks that act as a badge of origin for goods or services of a particular undertaking.
Failure to appreciate this distinction generally causes complexity.
A name is not automatically a trade mark #
Trade marks do not grant absolute exclusivity over the use of words as such. They offer limited monopolies in a clearly defined commercial space. To meet the registrability threshold, a name must be distinctive, either inherently (like Kodak for photography) or through use (like little trees for air fresheners). Inventive names tend to fare better than descriptive names. Personal names or surnames, particularly descriptive words, often require proof that customers relate them to a particular commercial origin.
Usually, names that are appealing to marketing teams within a business are vulnerable as a legal asset. Before launching a brand, it is prudent to understand the limits of trade mark law.
What trade marks do and do not protect #
A registered trade mark gives its owner exclusive rights to use the mark in connection with specified goods or services within a defined territory. It enables brand owners to challenge confusingly similar uses which blur the distinction between brands and risk misleading consumers.
While trade marks are powerful tools, they are not absolute. Informed IP strategies appreciate that trade marks do not:
- Confer blanket control over all uses of a name;
- Prevent all third parties from using the same name;
- Override legitimate instances of use.
Beyond trade marks #
The most effective brand protection strategies go beyond trade mark registrations alone.
Unregistered rights may arise through extensive use or documentation, but these rights are generally reactive and evidentially more onerous than registered rights.
Copyright protects an author’s creative work, such as logos, visual elements. Some iconic examples include the children’s television series Teletubbies or Star Wars costumes.
Design rights protect the overall look and appearance of products or packaging. The popular light-up Christmas gin bottle by M&S illustrates how design protection works in commerce.
Domain names and social media handles are not traditional IP rights, but in practice, they shape consumers’ perception of ownership and control.
Given the challenges of the digital era, it is critical that brands adopt a more holistic approach to protection rather than solely depending on a single IP right, in isolation.
Personal names and risks #
Where brands are built around individual or family names, legal complexity increases.
Where multiple individuals have a legitimate interest in the same name, assumptions about ownership begin to unravel.
Additional factors come into play when an individual is underage. In such cases, commercial use is generally limited, as there is no clear structure for future use, and early registrations without one can create friction in the long run. Some recent disputes illustrate the risks and consequences of developing a brand without a clear, comprehensive IP strategy where family names are concerned.
Precise ownership and licensing agreements are critical in such instances to avoid uncertainty about the brand's future direction.
Limits of trade mark rights #
Rights conferred by UK trade marks are not unlimited. Where a personal name is concerned, the law recognises the need to balance brand protection and legitimate interests in the use of a name.
UK trade mark law permits the honest use of one’s own name or address in the course of trade, reflecting that trade mark law does not entirely extinguish legitimate use.
Although the defence is narrow, in practice, this means that the scope and manner of commercial use must be considered. Registration may help you control the use of your brand, but it does not eliminate complexity.
Practical takeaways #
For businesses and individuals considering the best ways to protect their assets, it is important to:
- Assess the distinctiveness of their brand before launch
- Conduct clearance searches to help identify existing rights
- Ensure trade mark filings align with real commercial interest
- Layer protection across multiple IP rights
- Plan ownership and future use early, particularly where family or multiple stakeholders are involved.
Personal names are valuable assets but need to be deployed carefully. A well-rounded IP strategy requires a realistic appreciation of the strengths and limits of IP rights.
Thinking of building a brand around a name? #
Speak to our trade mark team for tailored advice on clearance searches, trade mark strategy, and long-term brand protection.
