Fashion names and trade marks: Securing the signature of brand identity

Iconic fashion brands like Dior, Prada, and Givenchy have built global brands around their designers’ names, highlighting the pivotal role of personal branding in the fashion industry. When celebrities are asked, “who are you wearing?”, answers underline the significance of the designer’s name as a mark of origin and quality.

Trade marks serve as essential ‘badges of origin’, signalling to consumers the source of products and the associated quality. For fashion brands, registering a trade mark is critical in protecting their identity and reputation.

Using your name as a brand

Many designers opt to use their own names for their labels. However, obtaining a registered trade mark for a personal name can be challenging, especially if the surname is common. In assessing the distinctiveness of a surname-based trade mark, IP Australia considers factors such as how common the surname is, the nature of the goods and services, and any additional meanings or associations the name might have.

To overcome potential objections, designers can provide evidence of use to demonstrate that the name has acquired distinctiveness in the market. If you are just starting out in the business, such evidence might not be possible. The combination of first and last names, the use of initials, or the incorporation of unique logos can also enhance distinctiveness.

Other branding options

Instead of using a personal name, designers might consider creating a unique brand name or a portmanteau. For example, “Adidas” is derived from the founder’s name, Adi Dassler. Other brands employ entirely made-up names or merge words to craft a distinctive brand identity.

Case study: Trade mark infringement

A well-known case that demonstrates the significance of trade mark registration involved Australian designer Katie Perry and international singer Katy Perry. Katie Perry, the designer, had been using her name for her clothing business since 2007 and applied for a trade mark in September 2008. On the other hand, while Katy Perry, the singer, adopted her stage name in 2002, she did not gain significant recognition in Australia until late 2007.

The court initially ruled in favour of designer Katie Perry, but then sided with singer Katy Perry on appeal in deciding that designer Perry’s trade mark registration should not have been granted. The court held that when the designer adopted her trade mark, the singer’s reputation in Australia was already such that consumers would be likely to be misled. This highlights the importance not only of being the first to use the name, but also considering the effect of other trade marks in the market. The music industry is known for artist merchandise and designer Perry should, in hindsight, have been more aware of this.

One titbit for the fashion industry, the appeal court held that “clothing” does not include “footwear” or “headgear” and that these goods are not goods of the same description. This means that a registration in respect of “clothing” will not necessarily prevent somebody else from registering a similar trade mark in relation to “footwear” or “headgear”.

Key takeaways

Securing trade mark registration early can provide robust protection, especially in disputes over name usage.

Individuals using their own names for commercial purposes may have some legal protection, but this may not extend to corporate entities using the same name. Also, using your own name has to occur in good faith, which means that you need to have completed clearance searches first.

Choosing the appropriate classes when registering a trade mark is crucial to ensure comprehensive protection. If the trade mark does not properly cover all of the goods and services you provide under the brand, then enforcement could also be an issue. So, getting the right legal advice at the start of the trade marking process is imperative. The Katy/Katie Perry case makes this even more important across clothing, footwear and headwear.

Understanding the nuances of trade mark registration and brand protection is vital for fashion designers to safeguard their brand identity and intellectual property. Our IP lawyers at Macpherson Kelley have everything you need to break into the market and stay in style.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.