Expert warns Joe Lycett's Hugo Boss could face legal IP Hurdles
The comedian formerly known as Joe Lycett could face legal IP hurdles if he tries to commercialise his new moniker, an expert has warned TheIndustry.fashion.
Last week, Joe Lycett legally changed his name to Hugo Boss, in a protest against the German fashion brand.
Lycett’s name-change is was a stand against the fashion giant for sending cease and desist letters to small businesses for allegedly infringing their trade mark. In particular the comedian stated in a BBC interview that he would like Hugo Boss to compensate a small brewery for its legal fees and its £10,000 cost of rebranding.
Heather Williams is a Partner and Trade Mark Attorney with Marks & Clerk and specialises in filing and protecting trade marks for clients across sectors including food and drink, beauty, fashion and retail. She discussed the legal implications of changing your name to that of a well-known brand.
She said: “The comedian’s name change does not in itself infringe the Hugo Boss trade marks. However, if Lycett uses his new name commercially, he will need to tread carefully to ensure he use does not infringe Hugo Boss’ intellectual property rights.
“There is a defence to registered trade mark infringement proceedings known as the ‘own name’ defence which applies to individuals using their name ‘in accordance with honest practices in industrial or commercial matters’. However this defence is not really intended to protect individuals who change their name by deed poll to highlight the enforcement practices of a luxury brand.
“In a case where an individual changes their name to that of a brand, there is a risk of infringement if they start using their name ‘in the course of trade’. In particular, a brand which has built up a reputation does not need to demonstrate there is consumer confusion in order to successfully enforce their rights.
“When a dispute is brought into the public domain, brand holders may need to grasp the nettle and be prepared to justify their actions in order to limit any negative exposure to their brand. Hugo Boss did put out a statement in response to the comedian’s name change, stating ‘We welcome the comedian formerly known as Joe Lycett as a member of the Hugo Boss family’ – using humour is usually a good tact in this type of situation.
“The publicity stunt which has attracted significant media coverage serves as a useful reminder for consumer facing brands to be mindful of the risk of potentially negative PR when taking enforcement action. Adopting a one size fits all enforcement approach is a risky strategy and brand owners need to factor in the risk that details of enforcement action and legal communications could go viral. However, brand holders should not be dissuaded from taking appropriate and proportionate action but should carefully weigh up all the available options.
“It will be interesting to see how this story develops. So far, a number of individuals including BBC radio presenter Danny Kelly have reportedly changed their name to Joe Lycett – a move which the comedian perhaps did not see coming but does take the attention away from Hugo Boss.
“While Joe Lycett’s name change may appear to be a well-intentioned move designed to defend the rights of smaller businesses, intellectual property laws are there to safeguard the rights of all businesses regardless of their size.”
Speaking exclusively to TheIndustry.fashion, Williams said: “Brands are valuable assets and businesses will continue to enforce their rights against those who infringe, regardless of their size. However, I think the approach taken to enforcement will be more considered, taking into account the risk of negative publicity, damage to reputation and potentially an impact on sales."
"I think businesses will be less inclined to chance their arm with cease and desist letters where the legal merits are weak, as the risk of this communication going viral can be more damaging than taking no action at all.”