A High Court judge has ruled in favour of womenswear retailer Karen Millen in a legal dispute between the firm and its eponymous founder over the use of the Karen Millen name.
HSP Karen Millen
Millen wanted to use her name on homeware products in China and the US but the court said the use of the name Karen Millen would breach the agreement she had with the business.
The court also said that the use of the name Karen, without Millen or “M” in the US and China, would also breach the agreement.
However, it was decided Millen was not in breach of the agreement in applying for trademark applications. She must now provide consent to the business when it applies for a trademark in countries where she has an existing trademark of her name.
The dispute centred on an agreement Millen and her then husband, Kevin Stanford, made in 2004 to sell their majority shares in Karen Millen Holdings, the business they established in 1981, to Baugur Group, with debt finance provided by Icelandic bank Kaupthing, for £95m.
The agreement prevented Millen from using her name to compete with the retail business.
Karen Millen Holdings went into administration in March 2009 following the collapse of the Icelandic banks. A new company, Karen Millen Fashions, was incorporated in 2009.
Millen was challenging Karen Millen Fashions’ right to enforce the terms of the original sale, and was seeking clarification of the agreement and how it should be interpreted.
Katie Goulding, trademark attorney at HGF, said: “Namesake brands are appealing for their sense of identity and personal charm but as this case and others continue to illustrate, parting company with the trading company can mean leaving one’s name and identity at the door.
“Retaining ownership and licensing the trademarks to the trading company might be one way through the woods but when investment is needed, this option can soon hit a dead end. Designers need to weigh up the legal and commercial pros and cons to adopting a distinctive mark that is not a namesake at the beginning of the brand and, if it comes to it, post-sale.”