Trademarks and the associated reputation, synonymously known as brand names, are considered an important asset of any business entity. Normally, consumer’s decisions to purchase is influenced by the brand reputation. In fashion world, aspiring designer while starting their career with established brands often attempt to launch their designs with their personal name labels. However, using personal name (trademark) while launching their designs under someone else’s corporate umbrella can also be disadvantageous with regards to designer’s future prospects as the personal name may become knotted with the goodwill associated with the brand itself rather than with the designer. Susan Scafidi, fashion law professor at Fordham University while being interviewed by Fashionista, said“When you put your name on a label, that is a corporation and no longer belongs to you.”
Earlier this year, the famous designer, Kate Spade, who previously owned the brand Kate Spade New York, after taking fashion break of nearly a decade made her comeback in fashion industry and swapped her surname to Kate Valentine. Kate Valentine, in 1993, along with her husband Andy Spade launched a fashion a company Kate Spade LLC. However, in 2007, Liz Claiborne acquired the company – now a public company called Kate Spade & Co – for $125 million while intellectual property rights including the well-established trademark ‘Kate Spade’ was made part of the deal and consequently Kate Valentine lost the rights to use her name for commercial purposes and thus to make her comeback she was bound to re-brand herself and she did.
In another famous instance, a renowned British fashion designer, Karen Millen, was barred from using her own name for commercial purposes in 2016. The designer had previously sold her majority shares in Karen Millen Holdings to Baugar Group for 95 million pounds. Karen Millen is considered an integral intellectual asset of the company driving-in huge profits for the company.
Fashion designers (aspiring or established) should stay vigilant with regards to future prospects while attempting to use or licensing or selling away the trademark or personal names regardless how the profitable offer seems to be. One of such example is when Tom Ford, while working as a Creative Director, never allowed to use his personal name for any designs being launched by Gucci or Yves Saint Laurent which ultimately enabled him to launch his own brand using his own name in 2006. Ergo, if the caution is not taken the designer may suffer a great loss as when the right time would come to reap benefits he will have to begin from scratch while the castle of his name will be standing in someone else’s corporate land!
Note: The original post is written by Aonia Masood (Intellectual Property and E-Commerce Consultant).
