Fund names become valuable commercial assets when they are successfully registered as trademarks. It is a common misconception that once a fund vehicle is formed, the owner can exclusively use the fund name with respect to financial services and prevent third parties from using the same name. However, the mere formation of a fund vehicle in a particular legal name does not provide the fund manager with trademark protection and should not be taken to indicate that the fund name is available for use and registration as a trademark. For example, a third party may have already used and/or registered a similar or identical fund name as a trademark, which could threaten a manager’s use of its chosen fund name and its ability to protect it. A fund name will identify and distinguish a manager’s fund and attract investors. Without trademark protection comes risk – if a manager does not secure trademark protection, its rights against third parties will be limited. This guest article by Ogier partner Sophie Peat explains the trademarking process in general and its nuances in the context of private fund names, including for environmental, social and governance (ESG) funds. Note that each jurisdiction has its own regulations and procedures for trademarks. For coverage of ESG trends, see our two-part series: “Making Sense of Evolving Regulations, Recent Enforcement Efforts and Antitrust Claims as to ESG Investing in the U.S. and E.U.
” (May 4, 2023); and “How to Navigate the Rough Waters and Turning Tides of U.S. States’ Anti‑ESG Movement and Europe’s Pro‑ESG Measures
” (May 18, 2023).