My Personal Name Is My Brand – Should I Register It As A Trademark?
Just because it is your own name, does not mean that you are entitled to trade under it (even if you have it registered as a company name, a domain name and an Australian business name). If someone else registers your name as a trade mark trade mark they could cause you to either have to change your trading name (even though it is your own personal name) or fight them through the courts for the right to trade under your own name as a brand name (legal fees would easily be in excess of $100 000, even if you won such a case).
Of course, you would still be able to call yourself by your name, but you would not be able to use your own personal name in a trade mark sense such as naming your training course after yourself, for example “Cathryn Warburton’s training course”, using your name as a company or business name or domain name or the name of your business Facebook page, are all likely to amount to trade mark infringement.
On the flip side, having your personal name registered as a trade mark will is a fantastic way to ensure: (1) you are not infringing someone else’s registered trade mark and (2) no one can stop you from trading under your own name as your personal brand name.
Real Life Example of the Two Coopers: The internationally acclaimed fashion designer “Trelise Cooper”, who does have her name registered as a trade mark, virtually world-wide and the not so well-known, but business-savy, New Zealand fashion designer, “Tamsan Cooper”
Luckily for Tamsan, she registered her name as a trade mark. When Tamsan’s profile started to rise, Trelise’s lawyers sent all sorts of threatening letters to Tamsan demanding that she change the name of her fashion brand. If Tamsan did not have her name registered as a trade mark, she would most likely either have had to (1) change the name of her brand (stop using her own personal name as a trade mark) or (2) fight the super-rich Trelise through the courts as whether she could continue to use her own name as her fashion brand.
In the letters of demand Trelise Cooper’s lawyers argued that the two names were confusingly similar and that the use of Tamsin Cooper therefore amounted to an infringement of the trade mark “Trelise Cooper”. If the court agreed that the two names were too similar, then Tamsin’s use of her own name would have amounted to trade mark infringement. Luckily for her, she had her name registered as a trade mark and this meant that she did not have to get dragged through the courts to determine whether or not she could use her own name as her brand.
1. The fact that Tamsan was using her own did not helped her.
2. The fact that Tamsan had a company called “Tamsan Cooper” Pty Ltd did not help her.
3. The fact that Tamsan had a domain name with the words “tamsancooper” in it did not help her.
4. Having an Australian Business name registered would not have helped Tamsan either.
5. The ONLY thing that could save Tamsan was the fact she had a trade mark registered because, according to both Australian and New Zealand law, a registered trade mark gives you the strongest rights to a brand name and gives you the right to stop anyone else using the same or similar name. Smart lady. Tamsan did have a trade mark registered. [NOTE: a .registered trade mark only amounts to a defence to trade mark infringement in the country that it is registered in as a trade mark. So if you have it registered as a trade mark in New Zealand, that will not give you a defence to a trade mark infringement action in Australia].
Tamsin’s registered trade mark was a complete defence against Trelise Cooper’s trade mark infringement claim. As a bonus, Tamsan was also able to stop others from using her name (and confusingly similar variations such as “Tamsin Copper / Tamsen Cooper” ) as a fashion brand. The lady in my 3-minute video I sent you previously was not so lucky. She got bad advice from a lawyer who told her there was no need to register her brand name as a trade mark until she was making money in her business (by then it was too late as a competitor got in first and registered her brand name as a trade mark) and she lost everything including her business and house and ended up bankrupt.
Happy Local Client Saved From Trade Mark Terror
Paul Johnson, owner of www.onthemarket.net.au from Moggil, Queensland says, “When I received a letter of demand from the massive Real Estate information company RP Data, I was stunned. They said I was infringing their registered trade mark. They threatened to sue me if I didn’t stop using my trading name and shut down my website within 5 days. I felt really intimidated, and was going to just agree. I am just a little business and cannot afford to fight with the giants. But then I rang Cathryn of Acacia Law and she encouraged me to take a stand. She explained that I was in a good position because I actually had my trading name registered as a trade mark. ‘Let me write them just one letter’ she said, ‘Cost will be reasonable and you will likely be able to keep your trade mark and domain name and not have to change your trading name’. It was the best advice I ever received. Cathryn basically told them to get lost and that if anything they were infringing my trade marks. The threatened law suit against me did not happen within their 5-day deadline. In fact it has been over a year now and they have not threatened me again. Having Acacia Law to take on the threat of litigation for me was liberating. They took care of it quickly, efficiently at low cost to me and, importantly, no stress to me.”
The main reason that we were able to fend of litigation threats on Paul’s behalf so easily and cheaply, is that he had been smart enough to register his brand name as a trade mark.
Another of our clients was not so lucky. She became embroiled in a trade mark dispute without having her brand name registered. Take a look at our 3-minute video to see her disasterous outcome (client details have been changed in the video to protect privacy).
Cathryn Warburton
