The recent announcement that leading Australian fashion designer Alannah Hill has separated from the label that bears her name (while seeking to continue to work in the fashion industry), is yet another recent example of a "name" and a company parting ways. Another example of "brand separation" that has received a lot of media attention in recent times is the dispute between former racing car driver and tyre salesman Bob Jane, and the company that bears his name, Bob Jane T-Marts.
It is relatively common for companies to use the name of their founder as their brand name (the likes of Louis Vuitton and Paul Smith in the fashion industry being other well known examples). Taking this approach allows the company to benefit from any brand cachet the founder has already built up in their name, and for their future successes and brand awareness to be intertwined.
However, the recent Alannah Hill and Bob Jane examples are a timely reminder to consider what happens to the brand when the "name" and the company decide to separate. Companies, and the "names" that founded them, need to be mindful of potential intellectual property and trade practices issues that can arise when a 'split' (amicable or otherwise) occurs. Lessons can be learnt from previous examples, two of which we discuss below.
Peter Morrissey
Australian fashion designer Peter Morrissey launched the fashion label "Morrissey" in 1997. Although he later sold the business, he remained an integral part of the profile and trade operations of the business until 2006. After a series of transactions, the "Morrissey" label came to be owned by M Webster Holdings Pty Ltd (M Webster). M Webster was the registered owner of a trade mark for the word MORRISSEY, which had been filed in 1999.
In 2008, a new company founded by Mr Morrissey (Peter Morrissey Pty Ltd) applied to register three trade marks for PETER MORRISSEY. M Webster opposed the applications on a number of grounds including its reputation in the MORRISSEY trade mark and its prior use of the earlier filed MORRISSEY trade mark.
In 2011, the Delegate of the Registrar of Trade Marks refused Mr Morrissey's new trade mark applications for PETER MORRISSEY, agreeing that the pre-existing MORRISSEY mark had a strong reputation in the Australian marketplace. Subsequent press reports suggest that Mr Morrissey and Peter Morrissey Pty Ltd ultimately purchased the rights to the MORRISSEY trade mark "back" from M Webster and Peter Morrissey is now again using his name for his own label.
Bob Jane
Renowned Australian car racing driver and businessman, Bob Jane, has faced similar difficulties with the Bob Jane T-Marts chain of tyre stores. Although Bob Jane T-Marts stores are still owned and operated by Bob Jane Corp Pty Ltd (Bob Jane Corp), Mr Jane has not been involved in the business since 2011. Mr Jane's dispute with Bob Jane Corp and members of his family is ongoing, and, unsurprisingly, has included a dispute about the use of the "BOB JANE" name.
After Mr Jane's involvement with Bob Jane Corp ceased, Mr Jane sought to start a new online tyre retail business called "Bob Jane Online" or "Bob Jane Global". However, following proceedings in the Federal Court of Australia, Mr Jane's online business was renamed "Webtyre.net", and Mr Jane was restrained from promoting this business or its goods by reference to the "BOB JANE" name.
Key Lessons
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Prior to launching a new brand using your own name, individuals should consider the benefits and drawbacks of doing so. Although the potential for a future 'split' might be considered unlikely when the company is being set up, consideration should be given to what will happen if the "name" and the brand decide to part ways in the future and any arrangement should be recorded in a written agreement.
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If a company and the founding "name" do decide to part ways and no prior agreement was reached regarding how the designer individual can continue to use his/her name, the parties should attempt to reach agreement on future ownership and usage of the brand at that point. Addressing the issue at the time of the 'split' is likely to be significantly more straightforward than at a later date, and will hopefully avoid protracted legal disputes in the future.