Brands Lawyers explain celebrity branding trademarks
From the beginning of modern European civilization the names of royals, aristocrats & politicians, have embodied a heightened perception of honour, importance and/or sense of purpose. Heroes like Alexander, became known as Alexander the Great, and instead of the less noble sounding name of Robert the Devil, Robert I, was popularly known as Robert the Magnificent. In turn Robert`s son was later known as William the Conqueror, as opposed to the less attractive name of William the Bastard. Celebrities now include female & male entertainers, as well as royals, aristocrats & politicians, reflecting the dramatic political, social and economic change of the twentieth century.
What’s in a name?
Entertainers such as film & TV actors, singer/songwriters, film directors, sports and TV personalities dominate the celebrities `A` list. In the entertainers `celebrity` world, personalities often have a personal side which they keep for an intimate and trusted circle, and a second self which is dedicated to the practice of their profession. A good example of this is a stage name. A stage name is described by Cambridge Dictionaries Online as, `the name by which an actor or performer is publicly known and which is different from their real name`, it goes on to say that `David Bowie is the stage name of the singer David Jones.` Another example is Henry Olusegun Olumide Adeola Samuel, professionally known as SEAL. In other words, entertainers will use an alternative name that is simpler to pronounce or to remember. They might also prefer a catchier name to increase appeal to their demographic fan base. Sometimes entertainers will change names to avoid prejudice or to blend in; they might want to hide their religious or cultural back ground. This was prevalent in the early twentieth century, for example, according to http://www.jstandard.com, Kirk Douglas had been Issur Danielovitch and Bernie Schwartz changed his name to Tony Curtis. In other words, the right personal name can be of very important value to achieving celebrity status. The personal name of a celebrity may be the difference between the success and failure of a film, record or even a TV career. When a celebrity endorses a product or service, such an endorsement can lead to a significant increase in popularity and sales of that product or service. A well-known personal name captures the popularity and reputation of that person. It is due to the popularity of their personal name, that they can be described as a celebrity. The more fascination, mystique and popularity that is evoked by a personal name, the greater a celebrity that person is. For example, Michael Jordans endorsement of the Nike trainers that bear his name, Air Jordan, made the shoes Nike`s top selling signature basketball shoe ever produced. Despite the fact that Michael Jordan retired from basket ball in 2003, according to http://www.nicekicks.com, Air Jordans still outsell other brands sold by most retailers today.
Celebrities, Trade Marks & Passing off
Traditionally trade marks did not apply to personal names. They applied to goods and services. The object was to: (a) indicate ownership; (b) indicate the source of goods and services; and (c) in some cases indicate the high quality of goods and service.
According to Intellectual Property Law Third Edition by Lionel Bentley and Brad Sherman, around the beginning of the 20th century, the nature of the mark changed to a valuable asset in its own right. In other words the mark per se, quite distinct from its ability to identify a product or service, was valuable as a marketing tool. Marks could generate an identity for the product `whether real or imagined.`
Today it is widely accepted that trade marks have clearly evolved to having an additional mythical status of identity that can be passed on to the user of a product or service. For example, a certain status can be passed on to the reader of a particular magazine, simply because of the brand of the magazine and the sense of success that it evokes.
Why should personal names be protected as Trade Marks?
Unlike copyright, there is no novelty value required for trade mark protection. There is no inherent novelty value in a personal name. The trade mark primarily distinguishes quality. According to Landes and Posner `Economics of Trademarks,` trade marks `facilitate and enhance consumer decisions and…they create incentives….to produce products of desirable quality.` There is also the justification of fairness. Celebrities, who have built a reputation in a personal name, have invariably worked hard to achieve that and the law should prevent others from unfairly profiting from the use of that personal name. Particularly where the celebrity is being deliberately falsely represented by an imposter, leading to confusion or where consumers or fans are confused.
But to be capable of being a trade mark a personal name must be distinctive. Generally personal names are too descriptive to be capable of being a trade mark. The more general a word is the less likely it is that the word indentifies the source of a product or a service.
But a personal name may be capable of being a trade mark if it can be shown to be distinctive in fact or to have taken on a secondary meaning See Wadlow (2004). If in the minds of the general public, as a whole, there is an association with a personal name (I refer back to lifestyle associations evoked by brands generating an identity`whether real or imagined`), then secondary meaning can attach to that personal name.
Trade Mark Registration
S1(1) of the Trade Marks Act 1994 (the Act) states as follows:
(1)In this Act a `trade mark` means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. .
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.
The Act unequivocally allows personal names as being capable of trade mark registration.
It is beneficial for a celebrity to register their personal name as a trade mark.
1. It gives the celebrity certain exclusive rights to use their personal name in relation to certain specified activities.
2. Once a mark is registered there is a deemed valid registration.
3. Registration confers increased certainty and reduces possibility of disputes.
4. Generally, trade mark registration enables the mark owner to protect their mark before they are put on the market; unfortunately, this benefit will not apply to the registration of personal names, since personal names will have to be shown to be distinctive, before they can be accepted for registration.
The law protects a distinctive personal name as a trade mark. If you want to register your personal name as a trade mark you will still need to overcome Section 5 of the Act. Under Section 5 of the Act, the trade mark registry may refuse an application under the relative grounds for refusal. However Section 7 of the Act offers possible solutions where a personal name is refused under Section 5 of the Act.