Trade names or business names as trademarks

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Quinn & Donnelly is one of Ireland’s well-known and most successful fashion design partnerships which was founded more than 30 years ago when the pair were fashion students.

Their collections, which are generally affordable, and primarily aimed at working women, have been sold for more than 15 years by retailers including Brown Thomas and House of Fraser. Recently, they were involved in a dispute concerning their brand name Quinn & Donnelly.

Although they registered their name as a business name years ago (on the register of Business Names, which has now been abolished) they did not register it as a trademark. They only applied to register it as a trademark last year.  However, their Irish manufacturer, Sonole Designs has objected claiming rights in the mark. There is currently little information available about the basis on which Sonole is claiming rights in the trademark.  It is possible the dispute is based on the terms of the original agreement between the parties.

Quinn and Donnelly have worked with this manufacturer for the past eight years. The dispute is now before the Intellectual Property Office which may take six months or longer to resolve and until a decision is reached in the matter, no collections may be produced under the mark.

Distinction between trademarks and business names.

At this point it is worth considering the distinction between trademarks and business names briefly. A trademark is a distinctive sign or indicator used by a business to identify its products or services to consumers.  It is a sign informing consumers that goods or services originate from a particular source, so they are able to distinguish it from similar products or services in the market.

A business name is the name under which a business trades.  So, if you are a sole trader or have a registered company name you could choose to be known as something else. For many businesses the trading name will be the same as their registered company name and will also act as their trademark. It all depends on how the names are used in practice.

To be able to function as a trademark a name must meet certain criteria, such as to not simply describe the products or services of the business.  If a trade name is used as a designation of origin to inform consumers where a product or service is coming from, then it is being used as a trademark.

This seems to be the case with the fashion designers in the present dispute.

As happens all too often in practice, the designers were under the impression that their registered business name was sufficient.  They had not realized they needed to register it as a trademark.

In such cases, the best advice is to register the trademark as soon as trading begins. If Quinn & Donnelly had done so, they may have possibly avoided the current dispute with their manufacturer, assuming they  understood the importance of clarifying who owns the IP rights when entering into agreements with manufacturers.

Often when businesses have not registered trademarks they have to rely on unregistered trademark rights in the name.  An unregistered trademark must be either inherently distinctive or possess secondary meaning to receive protection under trademark law. In other words, the question turns on whether there is goodwill in the name.  Does it act, in the eyes of consumers, as a designation of origin of the goods?  The evidential burden of proof can be substantial, and it is much simpler to establish rights in a name if it is registered as a trademark.

So the moral of this story is to register a trademark at the earliest opportunity.