Celebrity Trade Marks: The Name Game
In early 2018, Meryl Streep, one of the most iconic and celebrated Hollywood actresses, filed an application to trademark her name with the USPTO in relation to “Entertainment Services”. Even prior to Meryl, several English footballers such as Alan Shearer, Paul Gascoigne and David Beckham have successfully sought trademark registrations for their name. Moving to the Indian front, Bollywood actor Shah Rukh Khan has filed several applications to trademark his nickname S.R.K. Kajol, Sachin Tendulkar, Akshay Kumar, Sanjeev Kapoor and Amitabh Bachchan are a few names in the long list of people who have successfully trademarked their names. This growing trend of celebrities opting for trademark protection for their names exhibits the increasing awareness among the celebrities and personalities of their rights, more particularly their IP rights. This brings us to the crux of the issue in hand – Can celebrity names be validly registered as trademarks?
The Trademarks Act 1999 (the Act) contains no specific provision either allowing or disallowing the registration of personal names as trademarks. Thus it can be safely assumed that personal names can be validly registered as trademarks on the satisfaction of other requisite conditions. Section 2(zb) of the Act defines trademark to mean “a mark capable of graphical representation and capable of distinguishing the products and services of one person from those of the other and may include the shape of goods, their packaging and combination of colours”. A perusal of this definition clearly reveals that a trademark cannot be registered in isolation so as to merely protect the brand value of a person. It needs to be registered with respect to a particular class of goods. Similar is the rationale for celebrity marks as well. The celebrity names have to be associated with particular class/classes of products/services for it to be validly registered. As for instance, David Beckham holds a trademark for clothing, footwear and head gear. Paris Hilton got a trademark for her name for clothes and perfumes. Similarly Shah Rukh Khan has also filed trademark applications for SRK in almost all the 45 classes. Following a misuse of her name to post some derogatory remarks against Shiv Sena on twitter, Bollywood actress Kajol has filed a number of trademark applications in various business categories including broadcasting, telecommunications, utensils, carpets, tents, rugs among a number of other items.
The underlying rationale of celebrity Trademarks
Before delving into the statistical details and viability of celebrity marks, it is first essential to understand the rationale behind registering celebrity names as trademarks. Legally speaking, a trademark is registered as a means to protect and reward the intellectual efforts involved in creating and maintaining the mark, and to prevent misuse of their hard earned name, fame and goodwill. On similar grounds, celebrity trademarks are mechanisms which aid the celebrities to check the misuse of their name, brand image and goodwill associated therewith. With the passage of time and the increasing stardom of the celebrities and iconic personalities, their names which is their identity, acquire a distinctive brand recall, a secondary meaning and an exclusive association with their personality, thus consequentially attracting mischief mongers, on the lookout for low investment-high output marketing strategies. This is where celebrity trademarks play a vital role of shielding the reputation and goodwill from falling prey to unscrupulous scavengers.
An important aspect to be analyzed in respect of celebrity trademarks is the growing trend of Celebrity Endorsements. With the incessant increase of Celebrity Worship among the masses, business houses across the globe are realising the importance of “celebrity endorsement” as a tool to increase the marketability of their products. As a consequence, we find divas and icons like Aishwarya Rai, Hrithik Roshan, Kajol, S.R.K. endorsing brands of soft drinks, dish washing liquids, watches, perfumes and so on. Such endorsements contracts mutually benefit the endorsee, who is able to encash on the widespread reputation of the celebrity, as well as the endorser who receives attractive financial returns in exchange for licensing their names. However it is worth mentioning here that not every endorsement is legal and earns revenue to the celebrity. The modern e-commerce era creates an environment conducive for dishonest piracy of the names and brand image of celebrities for financial gains. Such dishonest practises can be adequately checked by the celebrities by obtaining a trademark registration for their respective names, which is nothing but their identity in toto.
Publicity Rights, Right to Privacy and Celebrity marks
Another aspect worth mentioning here is the concept of ‘publicity right’, which is an interplay between the ‘Right to Publicity’ and the ‘Right to privacy’. Right to publicity can be understood as the rights of a celebrity to charge a license fee for every use of his name, personality, photograph or likeness. The second facet of this concept is the Right to Privacy which is the right to be left alone and to prevent the misrepresentation of one’s personality. Trademarks on the one hand uphold and guarantee the Right to Publicity by enabling the personalities to license their names and earn revenue by way of license fees and on the other hand, protect and preserve the individual’s privacy rights by checking the misuse of their names.
Celebrity Trademarks – No absolute rights
All said and done, trade marking a personal name does not provide absolute right over the name so trademarked. It merely prevents the misuse of the name among the class of goods in respect of which the mark has sought registration. This in turn increases the filing of defensive applications spanning across multiple classes with no actual intention to use the same. As for instance, SRK has filed trademark applications in almost all the 45 classes. But does he actually intend to use the mark in respect of every product or service so registered is debatable. Another point worth mentioning here is the removal of the registered mark in case of non usage for a consecutive period of five years (section 47(1)(b) of the Act). Further, registration of celebrity marks is not mandatory as the Act already has in place section 14 which prevents the registration of marks bearing any semblance to names of dead persons, or a living person without his consent. In addition ‘Passing Off’ action available for unregistered marks is also available to a celebrity to check misuse of name and Publicity Right. But here again passing off requires extensive proof of reputational and irreparable damage suffered by the individual, to be furnished.
The name of any personality/celebrity carries goodwill and reputation, akin to established trademarks and is distinctive of and solely associated with the celebrity. Such name, fame and integrity acquired after years of hard work ought to be protected from misuse. Thus, the idea behind registering the individual’s name as a trademark for a particular class of goods is to keep a check on the misuse of the name in the trade of any item within that particular class. This not only prevents the arbitrary misuse of the person’s name across an array of products without consent, but also ensures that the person gets paid for every use of the name. The Shakespearean days of “What’s in a name?” have now gradually transformed into “Names Have Power” (Rick Riordan – The Lightening Thief), thereby making it all the more pertinent to secure the “Name” and the “Power” it holds.
Surana & Surana International Attorneys