Naming Your Brand After A Celebrity

It’s not uncommon for entrepreneurs to consider leveraging the fame of a celebrity or historical figure to boost their brand’s appeal. But before you slap a famous name on your product or company, it’s essential to understand the potential legal implications, in particular when it comes to trade mark infringement and passing off.

Trade mark Considerations:

One of the primary concerns when naming your brand after a celebrity or historical figure is trade mark infringement. Registered trade marks prohibit the unauthorised use of a brand identifier, commonly names or logos, that could cause confusion among consumers. Many famous artists and personalities have registered trade marks over their stage names and logos. The estates of many historical figures often hold and manage that figures trade marks.

The holders of valid registered trade marks can enforce their rights against others.

Most commonly, trade mark holders will argue that the alleged infringing mark is confusingly similar to the pre-existing mark and would therefore confuse the public. The assessment for this argument considers:

• The visual, phonetic and conceptual similarity of the marks; and
• The similarity between the goods and services the pre-existing mark is registered for and infringing mark is being used for.

The second leg of the above test is where many celebrities seeking to enforce their rights can fall down. If you are providing completely different goods and services to what the celebrity’s trade mark is registered for, the celebrity may struggle to rely on their registered trade mark, because it can be argued that the goods and services in question are so different from the celebrity’s offering that the public would not be confused.

In  2017 the English rock band Iron Maiden won a trade mark dispute against the video game company 3D Realms. The game “Ion Maiden” was deemed too similar to the band’s name, especially since the band had their own self-titled game. Had the band not had their own video game under a similar mark, they might have struggled to succeed in arguing trade mark infringement on these grounds.

That said, there is a further avenue for celebrities with trade marks to claim trade mark infringement, even if their trade mark does not cover similar goods and services to the alleged infringing mark. This avenue is known as the ‘reputation’ ground, where an alleged infringing mark is identical or similar to an earlier registered trade mark with a reputation in the UK. In these circumstances, the later mark would be deemed infringing if it would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier mark. In other words, marks that could exploit the goodwill associated with an earlier mark and dilute the significant reputation and distinctiveness the earlier mark has built are not permitted, even if the goods and services are different. Nonetheless, this argument requires significant evidence from the earlier mark holder to demonstrate it has a significant reputation that is at risk of dilution by the alleged infringing mark.

Passing Off:

A celebrity does not need to hold registered trade marks to argue passing off.

Passing off occurs when a business misrepresents its goods or services as those of another, that deceives the public (whether intentional or not). This can happen inadvertently when using a celebrity’s name in your brand without authorisation.

A notable example is the case of Rihanna v. Arcadia Group Brands Ltd [2013], where Topshop sold t-shirts featuring Rihanna’s image without her consent. Before this case, it was generally accepted that unofficial t-shirts featuring a celebrity’s image were generally not considered passing off as the public understood such shirts were not officially endorsed. However, in this case the court ruled in favour of Rihanna because the specific facts surrounding the matter meant the public could be deceived. In particular, Topshop previously had an official brand partnership with Rhianna which had come to an end. It was rules the public may not have realised this and the t-shirts therefore could deceive the public that the endorsement was still in place.

To steer clear of passing off claims, be transparent in your marketing and avoid creating the impression of an official endorsement or affiliation with the celebrity or historical figure in question. Clearly communicate that your brand is separate and distinct from the individual in question.

Conclusion:

While naming your brand after a celebrity or historical figure may seem like a smart and strategic move to capitalise on their popularity, it’s essential to proceed with caution. The law when applied to such contexts is inconsistent and hard to predict.

Get in touch if you receive a letter of claim regarding any of the above. We can assist with drafting your letter of response as well as co-existence and licence agreements should a resolution be reached