The trademark dispute between luxury jewellery brand Harry Winston and Bruce Winston, son of the company’s founder, has come to an end. Bruce had been selling his own range of jewellery and precious gems under his name, Bruce Winston. Harry Winston Inc claimed this would confuse consumers into believing the goods were connected with the Harry Winston brand.
Last week, the Trademark Trial and Appeal Board rejected Bruce Winton’s application to register his name for jewellery ruling that it would cause ‘confusion and deception’ as to the source of the goods.
It’s not the first time Bruce has been in a legal dispute with his father’s namesake company. When his father passed away back in 1978 he left the control of the company to his other son, Ronald, and two trustees. He did, however, specify that both brothers should receive equal income from the company – a sum of $350,000 annually (nice work if you can get it). Ronald, reasoning that he was the one actually doing all the work, decided to then top up his own salary to $1 million a year. Bruce then filed a lawuit against his brother for financial misconduct and demanded to see more information on the financials of Harry Winston inc. The result? A long and bitter legal battle which resulted in Bruce selling his shares for a cool $44 million in 1998.
While it may seem unfair that Bruce is denied use of his own name, its not unusual in the fashion industry. Back in 2012, a judge ruled that Guccio Gucci and Alessandro Gucci, the great-grandsons of the Gucci founder, could not sell handbags and accessories under the name Guccio Gucci because it determined an unfair association between their products and Gucci’s trademarks. The court ruled that it ”constitutes an act of unfair competition to Gucci’s detriment because the advertising materials of the defendant caused confusion with Gucci’s products and business activities and took unfair advantage of the qualities and reputation of Gucci’s products”.
We’ve said it many times before, beware of trademarking your own name! It may not have a negative impact in your lifetime, but will on the lives of your heirs and generations to come. Personal names, when used as a trademark, can become entwined with the goodwill associated with the brand itself rather than with you, the designer. When you think of Christian Louboutin, do you think of a small bald French man or do you think of an exquisite pair of red soled shoes? Problems can arise if and when you acquire a financial backer. If further down the line you part ways with the financial backer, you may lose the right to design under your own name. John Galliano, Roland Mouret and Helmut Lang are just some of the high profile designers that have lost the right to use their own name when they parted ways with the corporate backers who had acquired the rights. And with Gucci and Harry Winston, we are seeing problems for the founder’s ancestors.