Famous Names as Trademarks
November 1, 2008
Elvis Presley [1997] R.P.C. 543 and Linkin Park [2006] E.T.M.R. 74 are examples of cases which have highlighted the problems that can arise when famous people or groups try to protect their name through trademark law, in order to exploit the rights through merchandising or similar contracts.
The problem with trying to register a famous name as a trademark is that there is a question of whether the public believes that the name on their merchandise is an “indication of origin” or whether they are showing support or allegiance to the person or group on the merchandise when they choose to buy goods bearing the image of the famous person.
The well-known case of Arsenal v. Reed gave famous names and groups further protection. The European Court of Justice ruled that part of the rights of the trademark was to prevent the trademark from being used in an adverse way by a third party. In Arsenal v. Reed the premier league football team sued a vendor for selling Arsenal shirts and other fan wear. The Court ruled that unauthorized use on fan merchandise was an infringement under trademark law.
In a case decided after Arsenal, an Italian court decided the opposite in regards to hats, scarves, and key rings which bore an unauthorized InterMilano logo. The court said that fans were only buying these as badges of allegiance and would not be confused as to their origin especially due to the fact that no sportswear was being sold.
For a long time a famous name could not be registered as a trademark here in th UK. This policy has changed as under the 1994 Act this became possible. Many famous people have filed for trademark protection of their own name and signature. For example Wayne Rooney the famous footballer has had a trademark for his name and signature since 2002.
The basic test seems now to be whether the name itself is too descriptive for the purpose that it is sought. If it is, then it is not registrable. For example the names of some of the members of the Royal Family cannot serve as trademarks because of the widespread historical trade in royal merchandise.
Famous chefs have fared well with registering trademarks. Nigella Lawson has registered 12 trademarks and Jamie Oliver has 8. The registrations occurred after they became famous which suggests that using the name of a famous chef on food is not too descriptive to be considered trademark use.
This is an extremely delicate area of law and expertise is required to make sure that all rights to a famous name or image are managed correctly.
