The perils of using and registering your name as your trade mark

While using and registering your personal name as a trade mark might seem like a smart move, you should carefully consider the long-term implications and risks first.

A person’s name represents the epitome of a ‘trade mark’. An artist’s name on a famous painting, a designer’s name on the label of their clothing, or a trending influencer’s Tik Tok handle; all have the inherent purpose of indicating trade origin and are a natural choice when selecting a trade mark for that person’s business.

However, a recent decision of the Intellectual Property Office of New Zealand (IPONZ) highlighted the emotionally charged complexities of owning and licensing the trade mark rights in a person’s name both during the person’s lifetime and after their death. 

In this case the trade mark in question was JONAH LOMU – the name of the late New Zealand rugby star. Ownership of the JONAH LOMU trade mark was claimed by both the executor of his will (on behalf of Stylez Limited who held the exclusive license for the intellectual property rights in Lomu’s name, persona, and image including trade mark registrations for JONAH LOMU) and his widow Nadine Lomu, who applied to register JONAH LOMU as a trade mark after his death. Ultimately, IPONZ found in favour of the Jonah Lomu estate executor, which meant that his wife was unable to claim rights in her late husband’s name.

What personal identifying features can be registered as a trade mark?

The Trade Marks Act 2002 defines a “sign” as including (among other things) a name, signature, or device. A device can include an image containing the representation of a person. For example, the Nike logo:

is a depiction of Michael Jordan.  

The criteria for registration of a personal name, signature or representation are the same as for any other type of trade mark. A trade mark must:

• be used or proposed to be used in the course of trade;

• be capable of distinguishing the commercial origin of one product or service from another;

• not describe the nature or a characteristic of the product or service it’s used for; and

• not be identical or confusingly similar to an existing trade mark.

  
  

What issues can arise when trying to register your name as a trade mark?

The biggest problem with registering your name as a trade mark is that not all names are unique. You may well find that you share the same name with several other people.  If your name is a common one, or already associated with other businesses, it may not be possible to register it as a trade mark on its own.

Below are some instances where your name may fail to act as a distinctive badge of origin for your own goods or services:

First name only (e.g., JOHN) Surname only (e.g., SMITH) Single initial plus surname (e.g., J. SMITH)	If common, individual names are unlikely to be sufficiently unique to be registrable.
Names with secondary meanings (e.g., Taylor, Baker, or Green).	If the secondary meaning is descriptive or has a well-known meaning in connection with the goods or services, it is likely to receive an objection.
Industries where the use of a name is common (e.g., photographers, hairdressers, builders or plumbers).	If it is common for traders in those industries to use their name, it will be more difficult to prove the name is capable of being distinctive.

Even if it is registrable, is using and registering your name as a trade mark a good business decision?

Personal names can be powerful brands and provide a meaningful way to generate brand recognition, particularly if you are known in the industry. The goodwill and reputation you have in your name will automatically be associated with your business and can convey a sense of authenticity, trust and a personal connection with customers.

However, it is vital to be aware of the disadvantages and potential risks in using and registering your name as the brand for your business:

• Lack of exclusivity. Other people with the same or similar name are permitted to use their name in the course of trade, provided it is not in bad faith or likely to cause deception or confusion.  Your registration may not be enough to prevent this sort of use.

• Extending protection overseas. The rules relating to the registration of personal names differs in some jurisdictions, in which case registration may not be permitted or involve additional hurdles in some markets.

• Trade mark registrations are a form of property. A registered trade mark owned by a business becomes the legal property and an asset of that business. It therefore exists separately to you as the natural person identified by the trade mark. This means that the trade mark registration for your name can be sold together with the business, which can have several potentially adverse effects:

  • Depending on the new management of the business, you may no longer have control over how your name is used.  This can be problematic if the new management fails to maintain the same standards of quality or operates in a way that damages your personal reputation.

  • If the trade mark is uniquely tied to your identity and personality, then there may be resistance or confusion about the business’s identity once you leave or sell the business.

  • Depending on the scope of registration, if you leave or sell the business, you may no longer be able to freely use your own name in connection with a new business.

• Death. In New Zealand, like many other jurisdictions, registered trade mark rights can be inherited or assigned according to the terms of a will or estate plan. Assuming you maintain ownership or control of the trade mark registration, then the terms of transfer of the registration or the entity which owns the registration should be clearly and specifically accounted for in the estate to avoid disputes among heirs over its use, management, or sale. You may, for example, decide that the rights should be allowed to lapse and cease to exist, or be left to the benefit of your beneficiaries. If the latter, then there is a risk of the rights not being handled appropriately, or in accordance with your wishes which could cause tension between family members or other stakeholders, especially if there are no clear directions on how the trade mark should be used after your passing.

  
  

On reflection

When you tie your name to a business, regardless of whether it is registered as a trade mark or not, your personal reputation becomes directly linked to that business’s success or failure. A scandal, personal crisis, or even your death can dramatically impact the brand's value. If your name becomes synonymous with controversy or mismanagement, it may be difficult for the business to recover or distance itself from the negative publicity.

The risks associated with the lack of exclusivity, the loss of control when assigning or licensing the trade mark registration to a third party, and the potential complications that arise after death should also be carefully considered before you start using and/or registering your name as your brand.

Our trade mark specialists can help you better understand the risks and make sure that your brand can withstand the changes in your personal or professional life.