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Litigation and Dispute Resolution update: Losing the right to use your own name

Mar 25, 2014

You don’t need to be an intellectual property lawyer to know that a person’s own name can be trade marked. Many well-known examples come to mind (Yves Saint Laurent, Versace, Chanel etc.) But can a person actually lose the right to use their own name? In short, the answer is yes.

If a person’s name is trade marked, then the owner of the registered trade mark will have all the normal statutory protections associated with a registered trade mark. The owner can then stop even the person whose name it is from trading under that name in the class of goods or services in which the trade mark is registered. This is exactly what happened in some recent litigation in the Federal Court. Bob Jane Corporation succeeded in stopping Bob Jane himself (who founded the company) from using the name “Bob Jane” (and even from using a logo featuring Mr Jane’s own likeness) in connection with the sale of tyres, wheels and car accessories, because the Corporation owned the relevant registered trade mark.

Even where there isn’t a registered trade mark, a person has no absolute right to use his own name in retailing and can be restrained from using their own name if it is used in circumstances which refer to some other person, or business, unless words are used to distinguish him from that other person. If he or she suggests to others that his or her goods are someone else’s, that will be what lawyers call passing off. This can be stopped by an injunction. In Biba Group Limited v Biba Boutique a Mr and Mrs Fitzimon started up a fashion house in the 1960s which traded under the name “BIBA”. The business flourished and became very successful, but began to decline in the 1970s. The plaintiffs bought the assets and goodwill of the business from the Fitzimons and then reopened the business under the name “Biba Boutique”. They then spent considerable money on advertising the reopening. Later the defendant, whose nickname was Biba, opened a clothing boutique elsewhere in London, which was also called “Biba Boutique”.

The main argument for the defendant was that a person was entitled to trade under their own name. The Court rejected her argument, and issued an injunction stopping her from trading under her own name because of the confusion caused to the plaintiff’s customers.

It is also possible to accidentally lose the right to use your own name, or nickname. In one recent case, the owner of a well-known tap dancing academy sold her business and goodwill to a purchaser and then left Australia for greener pastures. The purchaser carried on the business for a few years and later registered a trade mark comprising the vendor’s nickname. The vendor then returned to the country and decided to reopen her own tap dancing business, using her own nickname. The Court held that because the vendor sold the goodwill of the business, she had implicitly transferred the right to use all unregistered common law trade marks and names associated with the business, including the right to use her own nickname. Therefore, the vendor was not permitted to register a new trade mark (which included her nickname) because of the risk of confusion between the two trade marks, and because she no longer “owned” her own name.

More information

For more information, or to discuss any of the above, pleas contact David Brown, Principal Lawyer, on (03) 8600 8828 or dbrown@kcllaw.com.au.

Our firm has extensive experience in trade mark registration, portfolio management, commercialisation and dispute resolution, so if you would like more information, feel free to get in touch with us.

Note: This update is a guide only and is not intended to constitute legal advice.