Vigilance is of the utmost importance whenever a patronymic name becomes a Trademark!
Beware of being dispossessed of your name! Here is a reminder of the rules that apply to patronymic names when it comes to trademarks:
- As the owner of a registered trademark, you may not attack a person who uses their own name (if identical to yours) as a trade name, sign, or company name, if they used it before you and acted in good faith. The reason for this rule: Everyone must be able to make commercial use of their name.
- No-one may apply for a trademark that would be harmful to a well-known patronymic name. The reason for this rule: To avoid benefitting from someone else’s reputation.
- If you apply for your own name as a trademark, you must ensure that this trademark does not already exist. Furthermore, once registered, your trademark is no different than the others. It becomes assignable, which makes it important for you to be well-advised!
Be careful, because one the sale is complete, the trademark seller (who carries the name) can no longer make commercial use of it as this will be detrimental to the purchaser. This is exactly what happened to Ines de la Fressange in 1999 when she sold her company and her “INES DE LA FRESSANGE” trademarks. After the sale, she was fired and could no longer put her name on her designs without creating confusion with the trademarks that she had relinquished!
Feeling dispossessed of her name, the designer tried to have the trademarks cancelled due to deception, but the Court of Cassation ruled against her in 2006. The judges concluded that Madam de la Fressange had proceeded with the sale and received the related financial benefits, which precluded her from dispossessing the purchaser.
A few months ago, Ines de la Fressange regained the right to put her name on her designs by becoming an employee of the company that currently owns the trademarks.
From a legal perspective, she is using her employer’s trademarks and not her patronymic name! Unless she reacquires the trademarks in question or has them withdrawn, she could find herself facing the same situation all over again.
This case is a perfect example of the risks associated with applying for a trademark bearing your name ̶ the trademark corresponding to your name becomes commercially unusable to you once it is sold. It is therefore necessary to anticipate the risks involved.
Another example of the risk associated with this type of application and its assignment is the Spanghero case (See the health scandal that adversely affected the image of an entire family who no longer held ties with the company in question: http://ip-talk.eu/?s=spanghero). As a matter of fact, one of the Spanghero family members will take back the company’s reins this week. In addition to saving many jobs of course, the family found a way to salvage its honour and to keep control of the use of its name!