You may have seen that Ballymoney entrepreneur Zara McLaughlin has been getting some publicity recently due to a letter received from the representatives of the owners of trade mark registrations for the mark ZARA. These numerous registrations cover, inter alia, goods which are identical to those which Ms McLaughlin produces. The retail giant requested that Zara stop using the name ‘Zara ceramics’ in connection with ceramics and pottery and she has rebranded as ‘Zara McLaughlin ceramics’ to prevent further action being taken against her use of ‘Zara ceramics’.
The issue at stake
Why, you may ask, would such a large company take issue with use of their trade mark by such a small local business? Surely, there could be no harm caused? How could anyone mistake ‘Zara ceramics’ for a ZARA product? Surely, this is just bullying?
ZARA have invested heavily in promoting and protecting their trade mark ZARA including registering the mark in respect of homeware, pottery, ceramics, etc. The use of the name ZARA by another party in respect of similar or identical goods may cause confusion to some consumers. No matter how small an undertaking may currently be, as the old saying goes, “mighty oaks from little acorns grow” and what is a small business today can soon grow into a large business where the use of a similar name may cause confusion to consumers. Isn’t it better for all parties concerned for any potential issues to be resolved sooner rather than later?
Ms McLaughlin is not alone in facing such an objection. In 2018, Tiffany Suzanne Parmar, who had been running an eyelash treatment business under the mark COTSWOLD LASHES BY TIFFANY, applied to register the mark on the UK trade mark register. The trade mark application was opposed by the Tiffany & Co., the famous jewellery company, based on its earlier registered and unregistered rights in the trade mark TIFFANY for multiple goods and services. While the opposition was based on a number of different grounds, it was only successful on one ground, the Hearing Officer finding that the mark applied for, i.e. COTSWOLD LASHES BY TIFFANY, was “similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected” and therefore “there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.” Consequently, Ms Parmar’s trade mark application was ultimately refused.
Own name registrations
There is no guarantee that you will be able to register your own name as a trade mark. Indeed, even Lionel Messi, the Argentinian footballer, had a nine-year battle to register MESSI as a trade mark due to opposition by a Spanish cycling company who owns the trade mark MASSI. It was only the fact that Lionel Messi is so well known that it was finally decided that his fame was such that it overrode the visual and aural similarities between the mark MESSI and the mark MASSI.
In Zara McLaughlin’s case, the addition of the surname ‘McLaughlin’, in my opinion, reduces the chance that confusion may occur as it adds another distinctive element to the mark and serves to differentiate the source of the goods of Zara McLaughlin ceramic from those sold under the trade mark ZARA by the owners Industria de Diseño Textil, S.A. Consumers are unlikely to mistakenly believe goods sold under her full name to be from Industria de Diseño Textil, S.A.
Own name defence
Additionally, under Section 11 of the UK Trade Mark Act 1994, there is a defence to trade mark infringement when using your own name. Known, unsurprisingly, as the “own name defence”, a natural person, i.e., an individual, NOT a business, who uses their own name in respect of the goods or services they supply can do so as long as said use is “in accordance with honest practices in industrial or commercial matters”. This means that they should do everything they can to avoid confusion being caused.
In 2020, comedian Joe Lycett, in a highly publicised action, changed his name by deed poll to “Hugo Boss” in order to highlight what he perceived to be unfair enforcement of the registered trade marks HUGO BOSS against a smaller firm. He stated on his TV show that he would be “launching a brand new product as Hugo Boss”. The product has yet to materialise and, in my opinion, such an endeavour would have met with a successful trade mark infringement action. Changing your name by deed poll to a registered trade mark and deliberately launching a product under that trade mark would not be considered to be “in accordance with honest practices in industrial or commercial matters” and it is therefore highly unlikely that an “own name defence” would have worked in such circumstances.
Look before you leap
Before adopting and trading under any trade mark, even if it is your own name, it is advisable to conduct a clearance search in order to make sure that by using the name as a trade mark you will not infringe the trade mark rights of a third party. We have considerable experience with this and look further to assisting further clients in this regard. Please contact us at firstname.lastname@example.org if you would like us to assist you in any IP matter.