Safeguarding Personal Names
January 22, 2024
Biswajit Sarkar - IP Law Firm India
Post time: 7:45 pm
Introduction
A personal name is more than an identifier; it symbolizes individual identity, heritage, and personal history. It distinguishes us and shapes our sense of self. Additionally, a name is a crucial element of personal branding, influencing perceptions, forming first impressions, and conveying character. For renowned figures, the importance of their name extends to public perception, brand identity, and professional success. Therefore, the need to safeguard one’s name becomes apparent, and Intellectual Property Rights offer a means to address this concern.
Need for Protection of Personal Name
Harnessing a renowned person’s name in marketing not only seizes the public’s attention but also kindles curiosity, generating interest in the associated products and services. This strategy has roots in ancient times when Queens and Popes were sought after to endorse patent medicines, a tactic that has consistently proven effective. Consequently, modern companies and manufacturers frequently leverage renowned figures to launch and promote their products, recognizing the potent allure associated with a well-known figure.
However, the prevalence of unauthorized use of renowned person names in advertisements has become a concern. Many companies exploit renowned person identities without obtaining proper consent, leading intellectual property experts to advocate for the safeguarding of image rights through registration under Intellectual Property laws. By doing so, renowned people can proactively protect their image and prevent unauthorized usage, ensuring the lawful association of their name with products in the marketplace.
Need for Protection of Personal Names through IPR
Celebrities commonly demand a licensing fee for the utilization of their name, image, or other distinctive attributes in advertising or merchandising endeavours. Unauthorized use of a celebrity’s name or image in connection with a product constitutes acts of passing off, unfair competition, and misrepresentation, posing a potential threat to their reputation. This unauthorized usage may also give rise to breaches of confidence or violations of privacy.
The unauthorized appropriation of a celebrity’s attributes not only jeopardizes their economic interests but also impinges on non-economic aspects. While economic interests can be quantified and compensated monetarily, non-economic concerns such as privacy violations, damage to reputation, and mental distress may not be entirely redressed through financial means. These affected rights encompass personality rights, representing a distinctive form of intellectual property that transcends mere financial considerations. Personality rights, being non-inheritable and non-assignable, highlight the personal and non-transferable essence of this form of intellectual property. This unique status is particularly emphasized through the avenue of Trademark registration, underscoring its distinct position within the framework of legal protection.
Personal Name as a Trade Mark
According to Section 2(1) (zb) of the Trade Marks Act, 1999, “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 the shape of goods, their packaging, and combination of colours. This Act does not explicitly specify the inclusion or exclusion of personal names or surnames for trademark protection.
The guiding norm in trademark law stipulates that a name or surname lacks eligibility for protection unless it carries distinctive characteristics. In essence, the capacity for a personal name to be registered as a trademark hinges on its ability to demonstrate a certain level of uniqueness or distinctiveness. Although the endeavour to secure trademarks for personal names is inherently challenging, there exist notable cases where such names have successfully attained trademark protection.
The complexity arises from the requirement for these names to possess a distinguishing character, setting them apart from common or generic terms. However, despite these challenges, numerous surnames have triumphed in securing trademark status, exemplifying instances where distinctiveness was acknowledged and legally recognized. Prominent examples include renowned brands such as Suzuki, Ford, Tata, Mahindra, Sony, Honda, Bajaj, and others, underscoring the feasibility of obtaining trademark protection for personal names and surnames in specific circumstances.
Trademark Success: Celebrities Leading by Example
Global Celebrities
Celebrities worldwide are proactively safeguarding their names to prevent unauthorized usage. An effective solution to address this concern is the formal registration of a celebrity’s name as a trademark. To optimize tax considerations, the celebrity should ensure that the ownership of the trademark registration lies with a designated company. An illustrative example is the registration of several trademarks in Canada utilizing the words ELVIS PRESLEY, owned by Elvis Presley Enterprises Ltd. This organizational structure can be readily established during the registration process, contingent upon securing the celebrity’s written consent filed with the Registrar of Trademarks.
This strategic approach is exemplified by figures like Paris Hilton, who has successfully registered her name as a trademark, permitting its use across a diverse range of goods, including clothing and perfumes. Similarly, David Beckham has secured a trademark registration for his name, specifically covering clothing, footwear, and headgear. These instances underscore the efficacy of trademark registration in not only preventing misuse but also in strategically managing the commercial use of a celebrity’s name across various product categories.
Indian Celebrities
Celebrities in India are proactively registering their names as trademarks to prevent unauthorized use and protect against misuse. The trademark registration prohibits the commercial use of their names in various domains, including films, TV, and advertisements. Notable examples include:
- Actress Kajol, has submitted multiple trademark applications covering a wide range of business categories such as telecommunications, broadcasting, household utensils, carpets, and more.
- Divya Yog Mandir Trust, has made numerous trademark applications for Baba Ramdev, Swami Ramdev, and Divya Yoga to prevent unauthorized use in areas like building materials, education, and training.
- Sanjeev Kapoor, who holds a registered trademark for SANJEEV KAPOOR KHAZANA in Class 29.
- Akshay Kumar, who has successfully registered KHILADI as a trademark.
- Sachin Ramesh Tendulkar, with his initials SRT being trademarked.
- Renowned figures like Shah Rukh Khan, Sunny Leone, and Amitabh Bachchan are also part of the extensive list of individuals who have trademarked both their names and images.
Beyond Borders: The Iconic Trademark of Mother Teresa
Lately, the nuns of Missionary Charities have encountered numerous instances where unscrupulous entities and individuals engage in unauthorized fundraising and commercial ventures under the names “Mother Teresa” and “Missionaries of Charity” across India. These dubious and unethical activities not only jeopardize the reputation of Missionaries of Charity but also exploit the generosity of the donating public, who frequently fall victim to fraudulent schemes. The resulting confusion among a substantial portion of the public, particularly those who support Missions of Charities, hampers the organization’s ability to consistently carry out its charitable missions on a global scale.
To curb such illicit activities and establish protection against the misuse of these revered names, multiple applications have been submitted for trademark registration in India, encompassing various goods and services associated with Missions of Charities, along with the application for registration of the personal name ‘Mother Teresa’. This proactive measure aims to safeguard the organization’s identity, prevent unauthorized exploitation, and ensure that the public’s trust and contributions are channelled towards genuine charitable endeavours.
We take great pride in announcing that our global law firm, Biswajit Sarkar- IP Attorneys, has successfully facilitated the trademark registration for the personal name Mother Teresa under Indian laws. Our longstanding commitment to providing diverse legal services to the organization dates back to the time when Mother Teresa was alive. We are honoured to continue our support and contribute to the protection of the valuable intellectual property associated with the iconic name.
Advantages and Disadvantages of Trademark Protection on Personal Names
Advantages-
- Protection against Unauthorized Use: Trademark registration provides legal protection against the unauthorized use of personal names. This is crucial for celebrities and renowned figures who often face the risk of their names being exploited for commercial purposes without their consent.
- Commercial Control: Protecting a personal name through a Trademark allows the individual or their designated entity to have control over the commercial use of their name. This control extends to various product categories, enabling strategic management of endorsements and merchandising opportunities.
- Building of Goodwill: It helps to establish goodwill and trust in a brand. This, in turn, fosters the development of a loyal customer base that readily identifies and chooses products associated with the brand. A trademark with a positive reputation and established goodwill can also serve as a valuable asset, potentially enabling it to secure financial support.
- Prevention of Passing Off: Trademark protection helps prevent acts of passing off, unfair competition, and misrepresentation.
Passing off, a common law tort, transpires when an individual markets their products as if they belong to someone else, giving the trademark owner the legal recourse to address this infringement. This holds significant importance in safeguarding the reputation of a celebrity and thwarting unauthorized usage that may adversely affect their public standing.
- Legal Recourse: Trademark registration provides a legal basis for pursuing legal action against those who infringe on the registered name. This ensures that individuals and organizations have a clear legal recourse in case of unauthorized use.
- Monetary Compensation: In case of infringement, trademark holders may be eligible for monetary compensation, addressing economic interests that may be affected by unauthorized use.
Disadvantages-
- Challenges in establishing Distinctiveness: Trademarking personal names can be challenging as it requires demonstrating a certain level of uniqueness or distinctiveness. Common or generic names may struggle to meet the criteria for trademark protection.
- Limited Scope of Protection: Trademark protection is limited to specific categories of goods and services. This means that even with a registered trademark, unauthorized use may still occur in categories that are not covered by the registration.
- Non-Alteration of Trademark Classes: Once a trademark is registered under a specific class, it cannot be extended to cover goods in other classes within the same company. While the registration application permits the selection of multiple trademark classes, it’s important to note that adjustments to the chosen class are not allowed post-application. Therefore, careful consideration of pertinent trademark classes is vital during the initial registration process.
- International Considerations: Trademark protection is often jurisdiction-specific. Obtaining protection in multiple countries can be a complex and costly process, and enforcement may vary across different legal systems.
Conclusion
The protection of personal names through trademark registration is paramount, particularly for celebrities and revered figures. Globally and in India, proactive measures have been taken to safeguard identities, manage commercial interests, and combat unauthorized usage. From global icons like David Beckham to Indian celebrities such as Sachin Tendulkar, trademark registration has proven effective.
The case of Mother Teresa exemplifies the broader challenge of preventing unauthorized exploitation for fundraising. Through trademark registration, the organization aims to preserve its identity and ensure public contributions support genuine charitable endeavours.
In essence, trademark registration emerges as a strategic and effective tool, bridging personal identity, commercial interests, and ethical considerations within the realm of intellectual property. As individuals and organizations navigate these complexities, trademark protection offers legal recourse against unauthorized use, ensuring the integrity and trustworthiness of personal names in the public domain.
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