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Is changing your name by deed poll a complete answer to trade mark infringement?

Mar 2, 2020

Author: Matthew Siddaway

Is changing your name by deed poll a complete answer to trade mark infringement?

Comedian Joe Lycett has today made headlines by changing his name by deed poll to “Hugo Boss” (see here).  Such action has been taken (presumably temporarily!) in support of a number of small businesses said to have been targeted by the famous brand.  However, does this drastic action give Mr Lycett (sorry, Mr Boss) free rein to use the trade mark going forward?

It has long been established that use by a person of his own name can be a complete defence to UK trade mark infringement.   The relevant provision (found at s.11(2)(a) of the Trade Marks Act 1994) was looked at by law makers as recently as 2018, when it was decided that businesses can no longer rely on the defence in respect of company names.

However, crucially, it has always been the case that any such use of a name (whether by an individual, or historically by a company) needs to be in accordance with “honest practices in industrial and commercial matters”.

Mr Boss is, therefore, free to use his new name as he likes in respect of non-commercial matters.   However, in respect of any commercial matters (including the “brand new product launch” referenced in the tweets), one suspects that changing your name in a deliberate attempt to target a famous brand is unlikely to meet the required “honest” standard…

Nonetheless, a good IP related story for a Monday morning!

 

  Matthew Siddaway 

Matthew has experience in a variety of trade mark, passing off, copyright and design right matters from advisory to enforcement of client's IP rights. He has also worked on disputes concerning domain names and has experience acting for leading brands in brand protection and anti-counterfeiting matters. Matthew has acted for clients in litigation in both the Intellectual Property Enterprise Court and the High Court. Read more.