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September 14, 2021
After designing a dress that made royal wedding history, Elizabeth Emanuel became a household name for masterpiece outfits and jaw-dropping design vision. Emanuel’s couture for high profile individuals and celebrities spared no one, with none other than Lady Diana walking the aisle in a headline-inspiring creation. Since this success, the British Couturier has climbed heights, dressing the Bransons, Jaggers, and Hurleys of the world. Sounds cool, right? Names like these are immediately recognisable because of the individual’s success, achievements or scandals (!) but when those names become brands, they take on a whole new life... and in enters the world of intellectual property!
Given the rise of YouTube sensations and entrepreneur fandom, this is likely to be important for businesses of the future, so we thought we would recap the infamous Elizabeth Emaneul case and let you in on a recent update.
Emanuel’s journey was rocky following her debut in the 80s; her royal success was followed by a recession which made business difficult. However, there was one valuable asset she managed to protect from the bailiffs; her name.
That all changed in 1996, when the leading designer sold rights to the name to another company. Since then, she has been engaged in a legal tug-of-war in a landmark case to regain the trade mark rights to her name. A quarter of a century is a long time to be fighting for the name you were born with and the name the public associates with you and your work. However, intellectual property makes it possible to transform personal assets into commercial assets and to protect (or in some cases, lose protection) over them.
Emanuel’s case has been through many highs and lows. In 1997, Emanuel assigned the rights in her business’ trading name, “Elizabeth Emanuel” to the company itself. Unfortunately, the business ran into financial difficulties and the rights passed to a new company, which renamed itself Elizabeth Emanuel International Limited (“EE”). Soon after, EE assigned its rights and the trade mark to Oakridge Trading Limited, and following Emanuel’s departure as an employee of the company, Oakridge applied to register the word mark ‘ELIZABETH EMANUEL’ in 1998.
This single business decision prompted the battle that has lasted almost 25 years. Emanuel has since reported that her lack of business acumen and financial backing to engage lawyers made this an extremely difficult time for her and because of this, she struggled to regain control of her identity, “Financially, I was living day to day. I just did not have the monies for lawyers.”
Trade marks, it’s true, can be incredibly expensive to litigate, even though they can cost very little to protect in the first place.
Eventually, Emanuel instigated proceedings against Oakridge (who subsequently assigned the rights to Continental Shelf 128 Ltd) to try to regain control of the trade mark. She filed an opposition against a new application that had been filed to protect her name, and simultaneously filed a cancellation action against the already registered right.
Despite her efforts, Emanuels’ arguments failed to convince the Hearing Officer that Oakridge’s, and subsequently Continental’s use of her name would be deceptive to consumers. The target market would, she argued, naturally associate the brand with her and her designs. Understandably, she felt that this association could impact (or worse, damage) her reputation as a high-profile designer.
The Hearing Officer at the case dismissed both her opposition and cancellation applications, emphasising that, as Emanuel had commercialised that name and then chosen to sell the rights to it, along with all trading goodwill, any deception that occurred was inevitable and lawful. This was not, they determined, something Continental could have avoided when using the name in good faith under the terms of the assignment she had originally granted. The case was reported to have truly ‘crippled’ Emanuel’s career.
The legal saga continued: On Appeal in 2006, the Appointed Person turned to the European Court of Justice for help resolving the issue. Ahead of its decision, Advocate General Ruiz-Jarabo Colomer opined that, a trade mark consisting of a person's name was not liable to deceive the public… even though it might give the mistaken impression that that person was involved in the design and manufacture of the goods. Given the transformation of the personal name to a commercial asset, the decision was unsurprising and highlighted the dangers of commercialising one’s own name without both legal and business support and guidance.
This year, however, this roller coaster dispute came to an almighty conclusion, with Emanuel finally regaining the rights to use and profit from her name. Ready to set the record straight, Emanuel is working on new designs coming soon to a TK Maxx store near you, (we can’t wait to see what she has in store for our wardrobes)! From rockstars to royalty, denim to silk and fame to failure (to fame again!), Emanuel’s career has really seen it all.
This case is a precedent for those who seek to protect their name under IP law and should be heeded as a cautionary tale. Just because it’s your identity, your title, or even your own name, doesn’t mean it is exempt from the provisions of IP law and that you can protect it from others forever. Commercialise your name with care and caution. After a 25-year battle, Emanuel has ‘succeeded’ in settlement, but others might not be so lucky…
If you'd like to discuss the IP intricacies of commercialising your name, reach out to us here.
From startups registering their first trade mark, to companies with large portfolios, we’re the intellectual property experts who get the job done. Find out about our intellectual property offering here.