Many people, particularly celebrities, have used their names as trade marks. For instance, the pop star Britney Spears has two trade marks over 8 classes of goods and services, ranging from music CDs to perfumes.
Arguably having a name trade mark is particularly effective when you’ve built a name for yourself. That being the case however, what happens when you leave the business and want to do something else?
These circumstances were argued – in a not particularly nice way – in the Bob Jane T-Mart case. In 2011, Bob Jane had a very nasty spat with the family business, which led to him exiting the family business. He then started up a new tyre business, and used his name in that new business. He even went as far as approaching franchisees to tell them about his new business.
The family company didn’t quite like that. They brought proceedings in the Federal Court trying to stop Bob Jane from doing this. They argued that Bob Jane had allowed his name to become part of the family company’s trade marks, and was well aware of this. Bob Jane argued that he had used his own name in good faith in relation to the new business. The Federal Court didn’t buy it. They considered that the logos that Bob Jane had used and the things that Bob Jane had said was evidence that Bob Jane had used the marks with the intention that consumers would associate their business with the Bob Jane and to leverage off the family company’s reputation.
In the end Bob Jane was ordered by the court to stop using his name (and image) when it came to selling tyres.
Can this apply to you? Well, it might! Even if you want to keep the brand within the family business, if you use your name as a trade mark, you might lose control of your name if you decide to exit the business or transfer the business to your son! It might be better to design your own mark from ground up, rather than use your own name and image as a trade mark.
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