May 2004
Trade marking David Beckham
The UK Trade Marks Registry has issued a new Practice Amendment Notice, PAN 5/04, titled 'Names of Famous People (Living and Deceased) and Groups' (www.patent.gov.uk/tm/reference/pan/pan0504.htm) in order to clarify the position of registrability of trade marks of celebrities' names. The Registry has stated that where a famous name is concerned and where the reputation does not stem from a trade in the goods/services covered by a trade mark application, it is possible that the name may appear to the average consumer as an indication that the goods/services are about the person whose name it is rather than an indication that the goods/services are supplied by, or under the control of, the famous person whose name is being trade marked. It seems that it may now be possible to gain trade mark protection for a mark consisting of a name of a celebrity so long as the trade mark does not relate to any goods or services which made that person famous.
The correct approach appears to be to consider whether the name is so descriptive in relation to the goods/services for which registration is sought that it could not be perceived by consumers as anything more than a description of the subject matter of the goods/services. Examples of marks that could not be registered as trade marks in relation to certain goods as 'David Beckham' for footballs and 'Gordon Ramsey' for kitchen utensils or food products. Naturally there would not be objections to the above registrations if they were made by the person whose name is being registered.
It was held in a case concerning the mark 'Elvis Presley' in 1997 that the name was not registrable for memorabilia products under the old law. The court stated that neither the singer, Elvis Presley, nor anyone else exclusively owned his name. There is no copyright protection afforded to either a name or a likeness of an individual apart from any copyright which might exist in a particular reproduction such as a photograph or a drawing. The court also considered that at the time of application for registration the name Elvis Presley was so well know that his names, including his first name 'Elvis' were no longer distinctive.
It was commented that even if Elvis was still alive he would not be entitled to stop a fan from naming his son or his car or anything else as 'Elvis' or 'Elvis Presley' simply because this was his birth name. In light of the fact that Elvis Presley did not own his name and could not, if he was alive, prevent all and any uses of it by third parties.
Briffa Comment:
Trade marks function as signifiers of origin. In the past the Trade Marks Registry has encountered some difficulty in allowing registration of names of famous people in case people thought that there was a link or connection between the merchandise and the celebrity (se the 'Elvis' case above). The new Practice Amendment Notice should clarify the position in relation to the circumstances in which famous names may be registrable. Naturally nothing prevents the celebrity him/herself from applying to register his/her name in relation to any goods or services.