18 August, 2015
With the incessant celebrity worship that is prevalent in India, there has been a growing practice of using the name of a Celebrity for unscrupulous businesses. The reason behind such dishonest practices is that usage of a celebrity name increases visibility of the respective goods or services as well as creates an impression in the minds of customers that the said celebrity has endorsed these goods or services.
This unjustifiable practice has created awareness amongst celebrities regarding their rights, in particular assessing their IP rights.
In order to prevent others from taking such undue advantage of their goodwill and brand, there has been a growing trend amongst famous people to trademark their name.Getting a trademark registration allows celebrities to prevent others from using their name for dishonest commercial purposes. It provides them with a mechanism to preserve the financial integrity of their name as well as provide their estate with better means to protect the economic value of the celebrity’s name after death.
There is no specific provision in Trademarks Act 1999(hereinafter as the “Act”), which allows or disallows registration of names. Thus it is safe to assume that registration of personal name is allowed. As per Section 2(zb) of the Act, “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors. A perusal of the above definition will make it abundantly clear that a trademark cannot be registered in isolation so as to protect the brand value of a person. Therefore if a celebrity is desirous of registering his/her name it should be with respect to a particular class of goods or/and services.For instance, Paris Hilton got a trademark for her name for sale of clothes and perfumes,whereas David Beckham has a trademark registration for clothing, footwear and headgear.Shah Rukh khan too has filed applications to register trademark ‘SRK’, in almost all the 45 classes. However one needs to keep in mind that if the registered trademark remains unused for a period of five consecutive years, then the mark may be removed from the trademark register[1]. This acts as a remedy against defensive registration.
If a celebrity gets trademark for his/her name that does not mean that they can prevent others from using the name with regard to all goods and services. All it means is that they can prevent others from using the trademark in respect to those classes of goods and services in which they have been registered.
Though celebrities in India have begun to take pre-emptive measures,such protective measures have greater prevalence in foreign countries like the United States. This can be ascertained by the fact that many celebrities have already registered names as trademarks; for instance, Beyoncé has got a trademark registration for her daughter’s name, Blue Ivory Carter, with respect to baby products. Angelina Jolie was involved in a legal battle with fragrance designer Symine Salimpour, when the latter decided to use ‘Shiloh’, which is the name of Angelina’s daughter, as the name of her new perfume. Kendall and Kylie Jenner too have filed trademark applications for registering their name with respect to hair accessories, clothing, and beauty products.
[1] Section 47 (1) (b) of The trademarks Act 1999
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