Kenzo She Better Don’t
by Nur Ben-Hamida
I don’t know about you, but I love the fashion world’s use of Intellectual Property law, and keenly watch and await for anything new and groundbreaking from the industry (to put on my body AND to put on this blog!). What’s more exciting, if you’re a keen legal geek like myself, is when the age old questions regarding trade marks and branding keep cropping up on the circuits- each and every time this happens, it creates an analysis on how the industry operates within the confines of the law- and more than that, how the market regulates as what is important. And in the fashion world, the “registerability” of names as trademarks is the issue that keeps coming forward, and the link between designer and collection, designer and brand is effectively explored through something as simple as a name.
One of the most common questions I get when advising or teaching is ‘Can you TM your name?/ Can you sue someone for TMing their own name?” Well…
Kenzo- the brand- successfully halted a man named Kenzo from doing just that. It’s been five years, and yes, we’re still talking about it. Kenzo Tsujimoto, from here on out, we shall dub K.Tsujimoto filed an two applications for ‘KENZO ESTATE’ with the EUIPO for goods such as wine and other alcoholic beverages. Kenzo, the Parisian fashion brand having been registered since 2001 opposed this registration on the basis that the mark was far too close to their own brand. Which, fair enough, perhaps. The usual argument was successful, that allowing K.Tsujimoto to register ‘KENZO ESTATE’ would allow for K.Tsujimoto to essentially ‘ride the coat tails’ of Kenzo’s extensive marketing stratagem, as consumers may make a link between the two marks based on the name, even if the markets are different. (When will Versace sell wine? I’m waiting to see what the bottle will look like.)
Appeal after appeal occurred of course, and the ECJ finally concluded that European trademark law cannot prevent individuals from registering their names, it also does not grant an unconditional right. The fact that Kenzo is also K.Tsujimoto’s first name is inconsequential when you consider the detriment or ‘free-riding’ that could occur to an already established brand.
Its not just KENZO
The power of names in the fashion world is especially important- designers brand themselves using their names constantly in the industry, and its the done practice. However, when you start using your name as a mark, it gets a little messy. You must learn to separate you, the individual, from you- your name- the brand.
Recently deceased Kate Spade had to learn this, when her company was acquired in 2007. She could no longer use her name for anything other than personal reasons, so if she wanted to set up a little business selling wine under ‘SPADE ESTATE’, the likelihood is the case would have the same outcome as Kenzo. Spade rebranded herself (legally changing her name to Valentine) and launched a new brand under Frances Valentine, linking again her personality to her commercial ownership. Perhaps in another post we will explore fashion design and moral rights- because there seems to be an argument for it when you look at industry norms.
Joseph Abboud also had to go through a similar issue, but perhaps a little stronger when selling his menswear company. After selling, he launched new lines under ‘jaz’. He could not even use phrases such as “a new composition by designer Joseph Abboud” and “by the award-winning designer Joseph Abboud”, because it could have caused confusion between the two collections.
So the next time someone asks the aforementioned questions, hopefully you’ll know the answer! The name ceases to be ‘Your’ name, but the name of something different, it becomes a brand, a trade mark, a commodity. So be careful who you sell it to, and if you happen to share the name of a large Parisian designer brand? Then that is just some real tough luck.