UK Fashion Designer Karen Millen has lost her fight to trade under her own name following a ruling in the High Court.
Central to the dispute was an agreement Millen made in 2004 when she and her husband Kevin Stanford sold their majority stake in the business to an Icelandic investor for 95 million pounds. The dispute was the extent of the trade mark rights purchased by the investors in the 2004 deal and specifically what freedom the designer had to use her own name in China and the US following the sale. As is usual in these agreement there were a number of restrictive covenants preventing Karen Millen from using the name Karen Millen, KM and K Millen or any other confusingly similar name. Karen Millen’s legal team argued that the restrictions could not apply to registered trademarks which had been applied for by her post sale in respect of products which were not being produced by her business at the time that she sold the shares to the investor. Having reviewed all the evidence the judge decided that the use of Karen Millen on homewares and accessories rather than for fashion would cause confusion between the brands and confirmed the rights of the Karen Millen retailer over those of the designer. Further according to the court the prohibition on the designer must also extend to the use of the work ‘Karen’ without the word Millen or with just the letter ‘M’.
The case illustrates potential problems arising with designers who use their own name as the brand. Designers need to weigh up the legal and commercial consequences of using their own name at the start of their careers bearing in mind that a purchaser may be able to prevent a designer from using their own name post sale.