10 Dec WHAT’S IN A NAME? FENTY v FENTY
The legal battle between Ronald Fenty and his famous daughter Robyn Rihanna Fenty over the use of the Fenty name is currently being played out in the media. It may seem obvious that Mr. Fenty should not be legally prohibited from using his own name, but under intellectual property law the issue is not so straightforward.
Rihanna’s ‘Fenty’ trademark, which has been registered in a number of countries worldwide since 2014, is used in connection with an exclusive range of luxury products sold under the ‘Fenty Beauty’ brand. In this dispute, Rihanna claims that her father, through his company, ‘Fenty Entertainment’, has traded on the goodwill and reputation of her well known Fenty trademark. She also alleges that Fenty Entertainment misrepresented itself as her agent and attempted to book events and solicited money on her behalf. Ronald Fenty and Fenty Entertainment also sought to register the name Fenty in relation to resort hotel services as a trademark in the United States, though it appears that this application was unsuccessful.
A central issue here is whether personal use of one’s own name can be prohibited where that name is identical or very similar to that of a well-recognised brand. The issue is not a new one. Rihanna herself is no stranger to legal disputes, such as when DC Comics sought to stop her trademark registration of the name ‘Robyn’ on the grounds that it was too close to their well-known comic book character. But it remains a particularly interesting and engaging point, especially when it involves very valuable and well recognised brands.
Under Trinidad and Tobago trademark law, it is possible to register one’s name, company or firm if presented in a special or manner, though if an individual is thinking of using his/her name in connection with a business or commercial activity, there are a few important things to consider.
- It is worth conducting some early due diligence to see if an identical or similar mark already exists and is being used in relation to the intended goods or services. Conducting searches of relevant trademark registries can be one way to confirm whether there are similarly registered trademarks. The importance of having a registered trademark should not be overlooked or minimised as it provides a brand owner with not only the right to use that mark exclusively but also to have protection under the law against any unauthorised use. For a brand owner, this is a key tool in any strategy for the commercialisation of products on a wide scale.
- Secondly, even where someone is using his/her own name as a trademark, it must comply with the criteria for trademark registration. Every trademark must be distinctive and able to distinguish between the brand owner’s goods or services and those of others. Presenting it in a special or unusual manner can help to make it distinctive and ensure that it is used in a way which would not cause another in the same business to mistakenly engage in infringement though honest use. One way to do that, would be to use one’s full name and not an element of it, for example ‘Ronald Fenty Entertainment’ as opposed to ‘Fenty Entertainment’. In this particular case, there may be compelling evidence to suggest that there was a deliberate intention to confuse and mislead others into believing that there was a connection with Rihanna and her Fenty brand.
- Brand confusion ought to be avoided as far as possible, because it can result in expensive and time-consuming litigation, for which the losing side might be liable for significant damages, loss of business and depending on the nature of the infraction, punitive actions. In this instant case, there was more than just use of the name – Fenty – by a company with the same name, conducting similar business. It was also use by Rihanna’s father, using what is his own name as well, which further exacerbates the potential for confusion in the market, as understandably one could be led to believe that ‘Fenty Entertainment’ had tacit authority to act on behalf of Rihanna and the Fenty brand.
While it seems easy to argue that a person should be entitled to the conduct of his or her business in his own name; where there is a claim of infringement or misuse of similarly registered mark, one factor for a court to determine will be the extent to which that use does not cause confusion and that any ulterior or dishonest motive exists.
It is too early to tell if the case of Fenty vs. Fenty will be settled out of court or if it will go all the way to trial, but one likely outcome may be that ‘Fenty Entertainment’ is not permitted continued use of its name as it exists. It may well be that Mr. Fenty would be permitted to use the Fenty name, but only in combination with his full name – i.e. ‘Ronald Fenty’ and with a notification that makes it clear that the company is not affiliated with Rihanna or her Fenty brand.
In cases like these, the Court is likely to decide in favour of an approach which seeks to avoid confusion or is misleading of the public. Balancing the protected rights of a valuable brand against those of an individual’s right to use his own name is an important factor in that decision.