Family business
Some fathers might arch an eyebrow at the suggestion that naming a child is akin to branding a business. On one level, the two decisions are often worlds apart: one is a deeply personal choice, often steeped in tradition and heritage; the other, a calculated commercial call designed only to drive customer recognition and revenue.
But in today’s age of personal branding, influencer endorsements and social media oversharing, the line between a name and a trade mark has never been more fluid.
Consider one of the more famous dads (and brands) of our time: David Beckham. Sir David was recently, very publicly, rebuked by his son Brooklyn for alleged attempts to control Brooklyn’s use of the Beckham brand.
As the Beckhams’ recently acquired billionaire status might attest, there is huge potential upside to careful control and exploitation of one’s personal brand. That said, this Father’s Day, Sir David may also have cause to reflect on the particular challenges of merging family names with business interests.
When does a name become a trade mark?
There is no strict difference between a name and trade mark. A name (whether in a pure word or stylised form) can generally serve as a trade mark in the United Kingdom (i.e., as a badge of origin). The key distinction is whether that name is being used, or is intended to be used, in the course of trade (i.e., for the sale or promotion of goods or services).
Well-advised brand owners will often seek to register their brands, as this makes it much easier to enforce rights against others using a confusingly similar mark in trade. But signs can equally exist in an unregistered form if they have acquired “goodwill” (a form of customer attraction and brand appeal).
When can issues arise with trade-marking family names?
Mark already in use
Trade mark priority is generally given to whoever applies for, or begins using a mark first. As such, if a similar name is already registered or in use by a third party (or even a related party, like another family member), a person might be prevented from registering or using their own name commercially in the first place.
Trade mark law does provide certain defences which allow an individual to use their own name without infringing. However, the scope of this defence is limited to an individual. In practice, this would rule out scaling that brand through a company, engaging in licensing deals or selling the brand to a third party. This significantly stymies commercial opportunities and longevity. Importantly, the “own name” defence does not provide any right to obtain a trade mark registration.
Sale to a third party
When a name becomes a trade mark, it also becomes a business asset. Like other assets, it can then be bought, sold, licensed and co-owned. This can lead to counterintuitive situations in which a person no longer controls the use of their name.
The sale or licensing of a name mark can also be accompanied by contractual restrictions, which may well go beyond limits imposed by the law alone. This may be the situation that perfumier and entrepreneur Jo Malone finds herself in after she sold her business and eponymous brand to Estée Lauder in 1999. At the time of writing, Ms Malone is resisting legal proceedings following a collaboration with the fashion retailer Zara in which her name appeared.
Family ties
As any PR executive will advise, brands live and die by their reputation, including those of individuals connected with the business. The questionable personal behaviour of owners or executives (and the bad press which flows from it) is a risk for any brand. However, for a business sharing the name of those figures, the threat of contagion is all the more direct. That risk is greater still where a whole family shares the name of the company, including individuals who may not have any involvement in the business and over which the business exercises no control.
The implications of the Beckham case
The above three issues may have combined to create a particular maelstrom in the Brooklyn Beckham story.
His name is registered as a trade mark in the name of his mother, Victoria. Brooklyn’s well-publicised Instagram statement referred to his being pressured into “signing away the rights to his name”.
The exact meaning of this statement, like the full picture, remains unclear. But it has been reported that David Beckham’s DB Ventures has entered into a partnership with private-equity backed Authentic Brands Group concerning his global brand. It may therefore be that familial and external business interests are combining and contributing to family tensions.
What can be done to avoid the pitfalls?
It’s fair to say that most families are not the Beckhams, and there may be simple and compelling reasons to use a family name as a brand. However, it is always worth considering early whether another – more detached, anonymous – term may be better suited, and pose fewer complications in the long term.
Conducting searches to check for availability is always recommended. But in a family-name context, it may also be appropriate to discuss the use of the mark with other family members wanting to make use of their name as a trade mark. If feasible, a co-existence agreement could be put in place to bind current and future owners.
Registration will normally be attractive. That said, registrations – particularly if they are in the wrong hands – can more easily be used as legal weapons to prevent other family members from using the name. As such, it may be worth agreeing to use the mark on an unregistered basis at the outset.
With so many careful judgment calls required, the sensible, fatherly advice is to speak to an IP professional where there is doubt.
