Protecting your Rights to your Namesake Brand
Namesake brands are common place. Designers launch their fashion brand using their name. Celebrities merchandise themselves out using their own name. Chefs license their name to create a myriad of food-related products. Fitness instructors create fitness plans under their own name. It’s a branding trend that is unlikely to go away. However, careful consideration must be undertaken if you choose to move forward with a namesake brand and it requires strategic planning from both a short term and long term standpoint.
1. Registrability Issues
Under the Canadian Trademarks Act, not every trademark is considered registrable. The Trademarks Act states that if a trademark is comprised of components that are primarily merely a name or a surname, that trademark is not, prima facie, registrable. This not an absolute objection. If the applicant can demonstrate that the trademark has acquired distinctiveness, the trademark can overcome this registrability bar. From a practical standpoint, providing the Trademarks Office with arguments that demonstrate that the trademark is not primarily merely a name or surname, as well as a consent to registration, can also overcome the registrability bar.
So, although there is not an absolute bar to registration, it can become more complicated.
2. Namesake License Agreement
One of the issues that should also be considered is: who owns the namesake brand. Although the designer/celebrity owns rights to their name, once the namesake brand becomes a corporate asset owned by a company, the designer/celebrity may now be precluded from using his/her own name for other business ventures. As such, an additional layer of careful corporate structuring and licensing should be undertaken. For example, the designer/celebrity should continue to own the namesake trademark and license the trademark to the company. Alternatively, the designer/celebrity could have complete ownership over a holding company that owns the rights to the namesake trademark, which in turn licenses the rights to the operating company. Either/both of these strategies takes into account the possibility/eventuality that if investors enter into the company, which could minimize the control the designer has over the business, the designer/celebrity’s rights to its name is safe guarded because the namesake brand is not a corporate asset owned by the company.