The use of personal names as brands is a common practice. Think Jenni Button for fashion, Charles Greig for jewellery and Carrol Boyes for cutlery and houseware. The practice is especially common amongst creatives, where a person might start to develop a good name for clothing design, creating ceramic art, or jewellery design. The obvious thing to do in that situation is to use your good name as your brand. It gives you a much-needed headstart.

“And why not? Personal names function very well as trade marks,” says Dale Healy, partner at law firm Adams & Adams.

“There are, however, a few pitfalls that people should be aware of before deciding to use their personal names as trade marks”. Healy says the case of Jenni Button v Jenni Button (Pty) Limited & 4 others serves as a good example.

One of South Africa’s leading fashion designers and the founder of the company Jenni Button (Pty) Limited (established to operate clothing retail outlets under the trading style JENNI BUTTON), concluded an agreement in which she sold her rights in the JENNI BUTTON brand.

The agreement provided for the sale of the name JENNI BUTTON together with the goodwill in the business carried on by Jenni Button (Pty) Limited. Button thereafter used the trade mark PHILOSOPHY in relation to clothing designed and sold by her, but continued to use her personal name, JENNI BUTTON, in conjunction with the trade mark PHILOSOPHY.

Says Healy – “the purchasers sought an interdict restraining Button from using the name JENNI BUTTON in the South African retail clothing trade. Button argued that she was a clothing designer by profession and could not be restrained from using her own name.”

The court found that Button’s continued use of her own name in the course of her clothing business infringed the right to goodwill associated with the JENNI BUTTON trade mark which, by a valid agreement, had been sold to the purchasers. The court found, therefore, that Button’s continued use of her name amounted to passing-off.

“This case illustrates how important it is to decide, at an early stage, whether or not to adopt your personal name as your brand and, if you do, what the consequences are of selling your brand.”

Healy points out that while the Jenni Button dilemma cannot be avoided, its effects can be softened and even lawfully exploited through a dual- or multiple-brand strategy.

“Staying with the JENNI BUTTON example, Button could have used JENNI BUTTON as her primary brand in conjunction with one or more other brands, say PHILOSOPHY. By applying both brands to her clothing, the brand PHILOSPHY would rapidly gain market acceptance and thus value through its association with the primary brand. She could then have sold her primary brand, JENNI BUTTON, while continuing to use the brand PHILOSPHY. By then, the brand PHILOSOPHY would have been capable of standing on its own feet,” he says.

However, this branding strategy will only work if the primary and sub-brand(s) are registered as trade marks. The reason for this is that a registered trade mark can be sold with or without goodwill, i.e. the buyer need not buy the entire business of the seller and need only take transfer of the trade mark registration. An unregistered trade mark cannot be sold without simultaneously selling the business in connection with which it is used.

“In other words,” remarks Healy, “if the brands JENNI BUTTON and PHILOSPHY were registered as trade marks, it would have been possible to sell either or both of the brands, either with the business carried on by the company, Jenni Button (Pty) Limited, or without that business. This is not possible in the case of unregistered trade marks.”

Adams & Adams is the legal consultant to, and sponsor of the 2012 Loerie’s Young Creative Category, partner of the Design Indaba, and sponsor of the PICA Awards for excellence in magazine publishing.

Contact: Dale Healy, partner at Adams & Adams
012 432 6000