Are there really IP lessons to learn from the glamorous adventures of a girl working at a marketing agency in Paris? Yes, yes there are!
One of the joys of being a trademark lawyer is that the fruits of your labor can be seen on the high street, in magazines and all around. I also love it when IP issues crop up in television programs and movies and Netflix’s hit series Emily In Paris has not disappointed on this front.
In the latest season, one of the marketing agency’s clients, the controversial fashion designer Pierre Cadault, finds himself in a bit of a pickle following the acquisition of his business by a large fashion house, JVMA (*cough* LVMH).
Given the reputation of the brand rests with the designer/creator of the product (at least to begin with), commercializing your own name is not uncommon in the fashion and cosmetic industry. But what happens when you decide to sell that business? Given that the goodwill and reputation are attached to your name, this is then where the value in the business lies and so you may find you have to sell all rights surrounding your name too. Where does this leave you?
Whilst UK and EU law offers a defense to infringement where you are using your own name in the course of trade, this comes with the caveat that such use must be in accordance with honest practices. At the point you commercialize your name and sell it to a third party, trying to push ahead with use of that name yourself is highly unlikely to fall under the definition of honest practices.
So, how about a variation of your name, for example your initials or a mark containing your forename/surname? Surely that is acting in accordance with honest practices. Whilst that may be the case, the “own name defense” only extends to use of your name or a name that is not materially different to that name and would therefore fall away leaving you open to the risk of trademark infringement.
Pierre Cadault’s situation is nothing new, as the likes of Karen Millen, Liz Earle, Jo Malone and Elizabeth Emmanuel can vouch for. Whilst Elizabeth Emanuel managed to secure an agreement with the rights owner, this took a whopping 25 years! Karen Millen was not so lucky, being refused permission to use her name or adaptations thereof on many occasions.
Clearly, good legal advice was not provided when Pierre entered the acquisition deal and sold his rights. It remains to be seen what new name Pierre will use for his next fashion range under but let’s hope he seeks some good IP advice before launch day!
Personal name brand protection is not where it ends. The Netflix hit also got me thinking about how, in addition to cutting edge marketing campaigns, Emily and her wonderful colleagues have been churning out new brand names, taglines and brand extensions for three seasons now. However, there is not one mention of the clearance searches and trademark protection that tends to go into bringing a new brand/tagline to market in one country let alone trending on social media. That is unless you want to risk a public battle and embarrassing (and expensive) rebrand further down the line.
As a lawyer gaining (a somewhat artificial) view into the world of marketing, I can see how marketing and legal can become a match made in heaven when they work closely together and build a strong relationship with a common purpose. New ideas can come to market quicker with IP lawyers involved at inception stage with a clear indication of the direction of the branding leading to a streamlined process resulting in a successful and harmonious launch of a strong brand.
Not bad for a tv show about a girl in Paris…
Written by Lisa Ormrod, Senior Trade Mark Attorney,Stephenson Law