James Martin, the celebrity television chef and restaurateur, recently ran into an issue that catches out far more businesses than many realise. James Martin attempted to register “JAMES MARTIN” and “JAMES MARTIN’S” as UK trade marks for alcoholic and non-alcoholic beverages, and a Scotch whisky company successfully opposed the registration of the series of marks. The UKIPO’s written decision can be found at Trade Marks Inter Partes Decision O/1200/25 (22 December 2025).
James Martin’s application (UK Trade Mark Application No. UK00003810603) was opposed by Macdonald & Muir Limited, which relied on its earlier UK registrations “JAMES MARTIN’S” (UK Trade Mark Registration No. UK00002124363) and “JAMES MARTIN” (UK Trade Mark Registration No. UK00900085373), both registered for whisky in Class 33. The opposition proceeded on the grounds under sections 5(1) and 5(2)(a) of the Trade Marks Act 1994. This case is a useful reminder that a personal name is not insulated from trade mark conflict, and that an earlier third party trade mark registration can prevent someone from registering their own name as a trade mark. In UK, the right to use your name in commerce is different to being able to protect your name as a registered trade mark. In principle, a person is able to use their own name commercially as a brand, with such use not infringing an earlier trade mark. However, this only applies where such use is in accordance with honest practices in industrial or commercial matters (changing your name simply to provide a defence to trade mark infringement will not meet such standards). As such, the question is not only whether an applicant is “entitled” to use their own name commercially, but whether registration of that name for the goods/services claimed would collide with earlier registered rights and create a likelihood of consumer confusion as to trade origin.
Many individuals and SMEs trade for years under a personal name in a particular commercial sector without difficulty, but as their brand expands, hit an obstacle when moving into a product class where an earlier, identical name is already protected. The lesson is to do your due diligence before moving into a new sector, and to carry out trade mark clearance searches before doing so and before filing new trade mark applications.
Macdonald & Muir Limited’ s earlier registrations date from 1998. Due to the age of the registrations, they were put to proof of use, to show that the marks are still in active commercial use and can therefore be relied upon in the proceedings. The UKIPO accepted evidence of use and, importantly for brand owners, reiterated the position that “use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes”. That matters because “I never see it on shelves here” is not a safe assumption when you are considering a non-use attack. Export-oriented activity can still sustain an enforceable UK right.
In its decision, the UKIPO found the signs to be identical, and in that situation the likelihood of confusion analysis becomes difficult to resist where the goods overlap or sit close together commercially. Consumers are used to brand extensions in the drinks sector, and the tribunal assessed confusion against ordinary purchasing conditions, including fast, visually driven decisions and arguments that consumers will “know” the applicant as a celebrity are not a reliable antidote to identical branding in an adjacent category.
The opposition succeeded on the claims under sections 5(1) and 5(2)(a) of the Trade Marks Act 1994, and Martin’s application was refused for a substantial portion of the Class 32 and Class 33 goods (including spirits and various low/no-alcohol alternatives), together with an award of £1,900 in costs.
For further information about this case, or for advice about protecting or defending your designs, please contact our trade mark department, or your usual Scintilla advisor.
Scintilla is Where Innovation Thrives
We put you in control of your destiny by organising, optimising, & monetising your intellectual property.