Immaterialgüter- und Wettbewerbsrecht

Commercialization of the Surname in Fashion Law

According to practice there is a possibility to sell or give a license to a personal trade mark, but this kind of practice can infringe on personal goods and human rights. The question which arises is should we take the pattern form US legislation and case law, or try to regulate this area in a unique way.

Last Update: 14.03.18

The aim of the project is to explore whether the regulations on the commercialization of the surname in Fashion Law meet the needs of legal transactions. In the case of a negative response, what are the optimal regulations to settle this issue properly? In essence, there are four basic research areas in the project. The first part of the project focuses on general issues. This section examines the issues relating to the protection of the surname on the basis of the Polish Civil Code regulations. This part of the project is very important due to the lack of any unique statement in Polish law in this area, and not many cases of merchandising (commercialization) in this area.

The second part of the project is dedicated to the norms governing registration of the surname as a trademark. In this case the surname, being a non-personal right, changes its character and is considered to be an economic right. Permeation of the protection of a surname as a personal right/company name - of intangible nature and the protection of a trademark or domain as the right of economic value causes the antinomy of how to protect this institution and how to pursue claims in case of an infringement of the surname as a trademark. This is so particularly in terms of claiming damages or compensation. In the area of intellectual property the economic values often intertwine with personal ones, causing difficulties in pursuit thereof.

The third part of the project is of vital importance given that the surname as a trademark has been mentioned explicitly in the provisions of the EU and US law. In view of the above, the conduced analysis enables to formulate conclusions de lege ferenda in the area of commercialization of the surname, as well as, in an attempt to assess the chances and aims of the changes.

The last part discusses how the above issues correspond to the fashion industry. Several reasons justify the choice of this sector. First of all, the growing interest in Fashion Law. It is mandated by the fact that American law excludes the works of the fashion industry from copyright protection. Consequently, an increasing number of cases relating to registration of the surname as a trademark can clearly be observed. Also, that which is particularly important in this research is that US law allows in an agreement transferring the right to a trademark (or granting license) such as the surname (or using the surname of the creator as a component thereof) to limit the possibility of using in commercial transactions the surname of the holder. Therefore, several uncertainties arising from that provision can be noted. Firstly, what the nature of the limitation regarding the holder of the surname which is a component of the trademark? and when he/she cannot later use it as an element of commercial nature? What happens to those rights with respect to persons holding the same surname and how to treat such limitations in the event of the death of that person?



Dr. Joanna Buchalska

Main Areas of Research

Rechtliche und ökonomische Rahmenbedingungen der Pharmaindustrie

Unionsrechte und Unionsschutzsysteme