Do I have the right to register my own name as a trade mark?

Kashif Syed | August 2020

Earlier this year, a decision was issued by the UKIPO tribunal in the opposition proceedings of Tiffany and Company (‘Tiffany & Co.’) v Tiffany Parmar ('Ms Parmar') (O-010-20). The case in question involved an individual by the name of Tiffany Suzanne Parmar who had applied to register a trade mark containing her forename ‘Tiffany’, namely COTSWOLD LASHES BY TIFFANY for goods and services in classes 3, 41 and 44.  The application was opposed by the famous US luxury goods and jewellery company Tiffany & Co. based on its earlier registered and unregistered rights in the TIFFANY name. Tiffany & Co. were represented at all stages of the proceedings by Ian Bartlett and Kashif Syed of Beck Greener LLP. 

Ms Parmar had been running an eyelash treatment business under the mark in question. In her witness statement evidence submitted in the proceedings, Ms Parmar stated that her forename ‘Tiffany’ was uncommon in England and Wales and that her personal reputation in the field is what led her to use of her own name as a way of identifying her products and services. Ms Parmar also contended that the use of the term “BY” followed by the personal name of the individual behind the business was a common practice in the beauty industry in order to connect the business with the individual’s personal reputation.

Having considered the parties’ arguments and evidence in his decision, the Hearing Officer, Mr Salthouse, held that there was a likelihood of direct or indirect confusion between Tiffany & Co.’s earlier trade mark registrations and Ms Parmar’s application for the mark COTSWOLD LASHES BY TIFFANY. Mr Salthouse had considered inter alia that the word ‘Tiffany’ in both parties’ marks would conceptually be perceived as a girl’s forename by the general public. 

The decision reminds us that there is no absolute or superior right to register one’s own name as a trade mark, whether that be a forename, surname or full name. However, notwithstanding whether a particular name is endowed with the requisite distinctive character to be registered as a trade mark for certain goods and services, full names or names with initials will generally always have a greater capacity to distinguish one business from another and increase the chance of avoiding conflict with 3rd parties who own earlier rights. While in certain circumstances trade mark law recognises the right of a business owner to use their own name in trade, this too is not absolute. Both the law of registered trade mark infringement and the common law tort of passing off recognise what are known as the ‘own name defence’ and the ‘concurrent right to use of one’s own name’ respectively. However, in the case of the ‘own name defence’ it is limited inter alia by the requirement that the name is used in accordance with honest practices in industrial or commercial matters. Moreover, under passing off law, it has been considered that the concurrent right defence is very limited in scope. Where all requirements to find passing off have been satisfied, namely that the use of a mark by a defendant constitutes a misrepresentation leading to deception and damage, the courts have unsurprisingly been sceptical of the practical effect of this defence which should not otherwise absolve a defendant by virtue of the fact that he or she has a certain name. Jacob LJ expressed his scepticism in the case of Reed Executive Plc v Reed Business Information Ltd [2004] R.P.C. 40, where he states the following in his judgment:

“The Judge rightly observed that the passing-off defence is narrow. Actually no case comes to mind in which it has succeeded. Because the test is honesty, I do not see how any man who is in fact causing deception and knows that to be so can possibly have a defence to passing off.”

The ‘own name defence’ to infringement has now also been further limited as it applies only to natural persons, whereas the defence as initially formulated also applied to corporate or firm names. This was changed in the major overhaul of the EU trade mark system which resulted in EU Regulation 2017/1001 and EU Directive 2015/2436 amending the 2009 CTM Regulation and 2008 Directive respectively. Under the 2009 Regulation, it was possible for both legal and natural persons to rely on the own name defence in response to an infringement claim where reasonable members of the trade in question, knowing all the relevant facts the defendant knew, considered the defendant’s use as honest. The courts had previously interpreted the relevant provision of the Regulation as encompassing company names, trading names and personal names. The new Regulation has limited the defence so that only natural persons can rely on it in cases where use of a personal name has been made in accordance with honest practices in industrial and commercial matters. The upshot of this is that use of a company or trading name can now be an infringement of a registered trade mark if the name is not connected to a natural person. 

Notwithstanding a person’s right to trade under their own name, the decision in Tiffany and Company v Tiffany Parmar reminds us of the importance of securing registered trade mark protection as early as possible; where 3rd parties possess earlier conflicting rights there is no absolute or superior right to register a name as a trade mark by virtue of it being the personal name of the applicant for registration.