Building up a brand takes time, effort and resources and it is in the interest of businesses that their brand is protected from misuse by third parties. But what happens if your brand is your name - and other family members want to trade under the same name? Can you stop family members from using the family name for their own business? Superstar Rihanna is trying to do exactly that in her claim against her father which was recently filed at the California federal court.
Rihanna, whose real name is Robyn Rihanna Fenty, runs a beauty and cosmetics brand, Fenty Beauty. She also uses her surname for her lingerie brand, and for an apparel and footwear brand in collaboration with Puma sportswear. Her father, Ronald Fenty, and his partner Moses Perkins run a music and entertainment company called Fenty Entertainment. Rihanna believes that her father is taking advantage of her successful business reputation and is infringing her Fenty trade mark.
She also alleges that Fenty Entertainment falsely claim to be linked to the singer when the business has in fact no affiliation to the singer, other than being run by her father. Rihanna is now suing for damages and an injunction to stop her father and Fenty Entertaining from using her brand.
Rihanna is not the first high profile business person to sue a family member over the use of the family name. Paolo Gucci pursued a similar claim in the late 80s against his family’s successful designer business. The court decided in the Gucci case that Paolo Gucci could not use “Gucci” as a trade mark, but could use his full name “Paolo Gucci” as long as he applies disclaimers that there is no affiliation to his family’s famous designer brand. Whether the court decides a similar outcome for Rihanna remains to be seen.
In the UK, trade marks protect their owners from third party misuse. Alternatively, businesses which have been trading for a while and acquire sufficient reputation in a certain market and geographical area are also offered protection through the common law of passing off. However, it is more complex and onerous to prove that passing off is taking place compared to bringing evidence of trade mark infringement. We recommend that you register your trade names and logos as trade marks at the earliest opportunity.
This isn’t the first time that Rhianna has gone to court: you can read Robert Ganpatsingh’s take on Rihanna’s Passing Off claim against Topshop here.
If you would like more information on brand protection, please contact Beatrice Bass on 01273 744240 or Beatrice.firstname.lastname@example.org.