Opinion: Why the court was right to judge Karen Millen can't use her name

Millen, who founded the Karen Millen clothing brand with her then-partner in the early 1980s, sold the business to an Icelandic banking consortium in 2004.

As part of the sale, she entered into a purchase agreement which barred her from using “Karen Millen” or any other “confusingly similar” name in connection with any business which is “similar to or competes with” the Karen Millen business.

She was previously involved in litigation in 2015, which prevented her from using “Karen” or “Karen Millen” for a fashion business in the EU.

This latest action concerned her ability to use her name for homewares in China and the US.

The judge in this case looked at various other fashion-led businesses, including DKNY, Ralph Lauren, Hugo Boss, Ted Baker, Calvin Klein, Paul Smith, Michael Kors, Next, Zara, Oasis and others and found that fashion businesses often branch out into other categories.

Rejected claim

He did not agree with Millen’s argument that only “bridge luxury” brands are known for dealing in a wide range of goods including homewares – saying that, while certain brands like Ralph Lauren “at the top end” had done so, so had “more budget-friendly” brands like Next and Zara.

Therefore, he concluded that Millen’s use of “Karen Millen” for homewares would breach the purchase agreement, since consumers who saw her homewares products would think that they were from the same source as “Karen Millen” clothing.

“Millen’s use of “Karen Millen” for homewares would breach the purchase agreement, since consumers who saw her homewares products would think that they were from the same source”

More controversially, the court also found that Millen’s use of “Karen” would breach the agreement.

But the judge said that he might not have reached this decision if Millen had been more specific about her intentions.

The problem was that she appeared to want to launch a line of clothing and accessories under the name “Karen” and a separate “Karen Millen” homewares line, and that it was also not clear how she intended to refer to her past connection with the Karen Millen business.

Once these factors were combined, there was potential for confusion.

This is the latest in a long line of cases in which fashion designers who have parted ways with their original businesses have then been prevented from using their own names for new ventures.

Examples include Kit Willow, Helmut Lang, Elizabeth Emanuel and Jil Sander.

The obvious way around this is for designers to come up with a brand that does not include their own names – one example being “The Row”, the luxury fashion label founded by the Olsen sisters.

“It can be difficult to obtain financial backing for a business that does not own anything as valuable as its brand name”

Building a new brand

Another option is for designers to retain ownership of trade mark registrations for their own names, but license them out to their businesses.

However, it can be difficult to obtain financial backing for a business that does not own anything as valuable as its brand name, particularly in an industry where branding is key.

If designers cannot retain ownership of trademarks for their own names, they may be forced to find alternative names for their new ventures.

For example, before he regained the rights to his name, Roland Mouret’s line was named “RM by the designer Roland Mouret”.

But it is unlikely that even this would work for Millen, given the wide-ranging nature of the purchase agreement in 2004 – so unless she successfully appeals the court’s decision, she may need to launch her new venture under an entirely new brand.

• Josephine Curry is an associate in the IP and media group at  law firm Taylor Wessing