What’s in a name? (2)

Kaine Agary

Traditionally, people named their businesses after themselves, for instance “Akan and Brothers Trading” or “Musa and Sons” etc. These days, people try to be a little more creative and come up with fancy names for their businesses. But namesake businesses still exist and usually pose no problem for the business owner until they decide to scale up or cash out of the business.

In the fashion industry, it is very common to have namesake brands acquired by other companies that retain the original brand name even when the namesake person is no longer associated with the brand. What the acquisition figures represent includes the goodwill attached to the brand name. In 2006, Liz Clairborne (now Kate Spade and Company) acquired the Kate Spade brand for $59m from its founders, Kate and Andy Spade, in a clean break. For the couple, selling off the brand was not a hard decision. They were not fashion designers to begin with and had grown tired of the business. They have both gone on to do different things outside of creating accessories and are quite detached from the brand they built even though Kate’s name is still attached to the company and the Kate Spade brand has expanded into a lifestyle brand. What this means is that if Kate Spade (the person) ever wanted to start up a new line of fashion and accessories, or goods and services in a class where the new Kate Spade and Company holds a trademark, she could not use her own name.She only has use of her name for personal transactions or businesses in a class unrelated to those in which Kate Spade and Company operates with the trademark.

Cashing out does not necessarily mean total severance from the name and business as was the case with Kate Spade. Bobbi Brown Essentials makeup line is an example. In 1995, Estee Lauder Companies, Inc. bought over Bobbi Brown Essentials but the namesake person Bobbi Brown retained complete creative control of the brand until she stepped down only recently. Bobbi Brown was also able to collaborate with another company to launch Bobbi Brown Eyewear. The designer Donna Karan is another example. In 2001, Donna Karan International was acquired by Louis Vuitton Moët Hennessy (LVMH) retaining Donna Karan as chief designer until she left to focus on her new brand, Urban Zen. Last year, LVMH sold off the Donna Karan brand to the New York based GIII Apparel Group.

These transactions and their consequences on an eponymous trademark depend on the acquisition contract. It is flattering when your hard work is recognised by interest from a large company interested in buying your brand. Also, a company may want to cash in on your celebrity by licensing the use of your name for their product. As with all things, the details of such acquisitions must be discussed with professionals.

As the world shrinks with technology and the markets for our small businesses expand, all business owners must pay attention to and protect their trademarks on both ends – that is, ensure that the marks are distinctive enough such that if they enter another market outside Nigeria there will be no issues about infringing on the trademark of another business, and legally protect themselves with a registered trademark so that a business with bigger financial muscle and wily lawyers will not steal their trademark. Note also, as per Uthman Mohammed, J.C.A in Beecham Group v Essdee Food Products [(1985) LPELR – 21156 (CA)], that

“The law of trademarks is aimed at the subtle as well as to the obvious infraction of it and both the ears and the eyes must be together involved in the exercise of comparison. If this test is applied in the present case, we do not think that the mere substitution of the letter ‘A’ in red for the letter ‘B’ in black (but clearly retaining the size and lettering in both designs) is sufficient to dispel the confusion which may likely arise in the mind of a customer who has almost always to go by his recollection.” In that case, the confusion was between the similar sounding names “Lucozade” and “Glucos-Aid.”

I often wondered about Visafone in Nigeria and what would happen if Vodafone tried to enter the Nigerian market. In my opinion the Visafone logo was very similar to Vodafone’s. Both logos looked like they were created with the same font and the same shade of red, and both were in the same class of business (telecommunications). Fortunately, there were no issues there but with access to the internet and businesses expanding beyond their borders with the help of the internet, it is not a bad idea to scour the internet and make sure that you do not create a brand that is similar to one that already exists. In the excitement of naming your brand or product or service, you would also do well to research widely to ensure that nothing out there is the same or similar to what you have chosen, and then once you are satisfied that it has the necessary distinctive characteristics, protect it legally. All of this may cost you some money but not as much as it would cost you if you have to deal with trademark infringement issues.

Finally, bear in mind that you can lose your right to trademark protection. I mentioned earlier that trademark protection requires active defence by the owner. A trademark owner is responsible for policing the market to uncover infringement by way of use or dilution of their mark. And, a trademark owner must show continued active use of their mark. You cannot register a mark and sit on it. You must use it and if you do not, your rights to the mark can be cancelled.

Now, go forth and prosper in your name!

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